Key Takeaways

During this PTAB Playbook webinar, Director David Holman and Associate Tyler Liu explored the PTAB’s standard for “compelling merits” in the absence of a Sotera stipulation, based on their recent survey of over 450 Decisions on Institution.

Some key highlights from the program include takeaways for both petitioners and patent owners when dealing with this issue:


  • Simplicity is key!
    • In cases where the Board found compelling merits, the Board routinely characterized the petitioner’s arguments as straightforward and clear.
  • Look for clear disclosures of all claim elements in art and avoid complicated arguments.
  • Avoid complex multi-reference combinations as they are less successful.
    • Anticipation or single-reference obviousness grounds that are clear and persuasive have been found compelling.
  • Consider filing an authorized pre-institution reply.

Patent Owners:

  • Consider rebutting the merits of the Petition’s grounds.
  • Point out unexplained ambiguities, missing claim elements, and reasons to combine.
  • Expert testimony with the POPR may help bolster arguments against compelling merits.

For further guidance, contact us directly and watch the On Demand recording of the webinar to learn more about compelling merits.

Note: CLE is not available for On Demand viewing.

Presenters / Panelists