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Trends Begin to Emerge in USPTO Post Grant Systems

  • 02.25.13
  • Eileen McDermott
  • Managing IP Magazine

As of February 22, the USPTO has received 142 petitions for inter partes review (IPR) and 15 petitions for post grant review of covered business methods (CBM). Many of these petitions have received rulings that instituted some claims while rejecting others, which is expected to have serious consequences for parallel litigation. Robert Greene Sterne is quoted in an article entitled "Trends Begin to Emerge in USPTO Post Grant Systems," in which he discusses the difficulties presented by this situation.

"Most petitions have been instituted, but they knock out some claims and attacks," said Sterne. "So if I want to knock out three claims [using one argument], the PTAB may allow that on two but not on the other one. What is the legal implication of that to your overall case? Are we in better or worse shape than before if just one or two claims are allowed?"

He also discusses the importance of preparation in post grant proceedings. "Trial lawyers are in denial. They don't think these are going to be a big deal," Sterne said. "Deposition is the testimony in these proceedings. You don't get to do it again. That trips up the litigators. There's a lot of room for mistakes."

 Sterne Kessler is handling the third highest number of IPR petitions.

Subscribers to Managing IP Magazine can read the full article here.

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