Manufacturing Factor Adds More New Twists to AIA Cases

PTAB Practice Co-Chair Jason Fitzsimmons spoke to Law360 about the recent memo issued by U.S. Patent and Trademark Office Director John Squires, addressing how U.S. manufacturing activities will factor into institution decisions in America Invents Act (AIA) patent challenges.

Fitzsimmons commented, “Overall, these new factors show the continued shift from institution decisions being focused almost exclusively on the petition merits to a broader approach that factors in economic and policy considerations.”

In addition to the other considerations in AIA analysis from the past year, he noted that “it adds another wrinkle to consider on either side of the “V.” You need to now also think about the type and size of the entity and the extent and location of their operations.”

“I wouldn’t be surprised if the director provides some additional guidance once parties start briefing this issue, to explain why certain facts weighed one way or the other, because that’s really when I think this will become useful to parties,” Fitzsimmons added.

With this announcement, Fitzsimmons said, “there’s a signal here that institution is no longer just about whether a petition is really strong on the merits. It’s also about, I think, for this director, who that petitioner is, who the patent owner is, and how they’re using the PTAB and whether it’s an efficient use of the PTAB’s resources to proceed with the case”