Yet another novel business model focused on IPR petitions appears to have emerged in the patent litigation industry. We previously discussed IPR petitions filed by New Bay Capital LLC, which were speculated to have been filed on behalf of a hedge fund to shift the stock price of a publicly traded patent assertion entity.
While developing an inter partes review petition, it is easy to get so focused on the substance of the invalidity challenge and expert declaration that PTAB procedure and practice guidelines are left as an afterthought. However, as has been shown time and time again, the PTAB relies on its procedures to help keep post grant proceedings streamlined. As the dockets of the PTAB Administrative Patent Judges become heavier, one can expect the importance of procedure to become even greater. Two (related) practices that appear to frustrate PTAB Judges are: (1) incorporating into the petition by reference portions of declarations or other exhibits, and (2) insufficiently explaining in the petition how claim elements are met.
It has been a little more than one year since the Patent Trial and Appeal Board (“PTAB”) issued their first final written decision in an inter partes review and accordingly. Since then, by our calculation, the PTAB has issued 91 Final Written Decisions in IPR proceedings.1