"This week, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart posted another round of Director Discretionary Denial decisions to the PTAB Decisions page, almost all of which denied institution to America Invents Acts (AIA) patent validity trials. Stewart's recent rulings generally confirm the trend so far that a patent owner's settled expectations with respect to patents that have been in force for six years or more hold significant weight, although in two cases this trend was bucked."
"In 16 decisions issued on petitions for Director Discretionary Denial of institution in inter partes review (IPR) proceedings since Wednesday, September 3, Stewart granted the requests in full. In almost every decision, several of which involved petitions in multiple IPR proceedings challenging different patents, Stewart found that the totality of the evidence and arguments presented by the petitioner and patent owner weighed in favor of discretionary denial under the Director's authority to institute codified at 35 U.S.C. § 314(a)."
USPTO Acting Director Coke Morgan Stewart issued numerous Director Discretionary Denial decisions largely denying institution of AIA patent validity trials. The rulings emphasize the weight of patent owners' settled expectations, particularly for patents in force six years or longer, while recognizing limited exceptions. Petitioners must present detailed evidence of national security interests in their products and material patentability issues missed during prosecution to overcome discretionary denial. The timing of parallel infringement proceedings also heavily influences outcomes. Sixteen decisions since September 3 resulted in full grants of discretionary denial, with the totality of evidence and arguments assessed under 35 U.S.C. § 314(a). TSMC's petition was allowed to proceed despite a Marlin Semiconductor patent being in force for 15 years.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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