Something Old, Something New

The steady expansion of the use of discretionary denials at the Patent Trial and Appeal Board (PTAB) seems to have continued this past week. Since Acting USPTO Director Coke Morgan Stewart assumed her role in January, she has withdrawn prior guidance limiting such denials based on parallel litigation under the NHK-Fintiv rule; imposed a broader set of factors upon which a PTAB petition can be denied; and has taken over the discretionary denial process herself as part of a new two-stage institution procedure. Stewart’s subsequent decisions have suggested, among other things, that a petition for inter partes review (IPR) of a patent long in force could be denied based on “settled expectations”. Now, review of a patent recently issued could be denied under certain circumstances.