ANNUAL PTAB DIGEST
PTAB DIGEST 2021/2022:
THE LATEST TRENDS AND DEVELOPMENTS
IN POST-GRANT PROCEEDINGS
CONTENTS
3
INTRODUCTION
4
OVERVIEW OF POST-GRANT
PROCEEDINGS
11
TRENDS & STATISTICS
11 PTAB Snapshot
13 The Changing Landscape
of Patent Dispute s
35 PTAB Issues Decision
Awarding Priority of
Invention of CRISPR
Gene Editin g Patents to
Broad Institute
38 Federa l Circuit:
PTO Director Decisions
Vacating Ex Parte
Reexamination for Estoppel
Subjec t to Judicial Review
41 DraftKings Persuades
PTAB to Invalidate
Competitor’s Mobile
Gambling Patent
43 USPTO Direc tor Clarifies
PTAB’s Application of Fintiv
to Limit Discretio nary Denials
46
ADDITIONAL INSIGHTS ON
POST-GRANT PROCEEDINGS
47
ACKNOWLEDGEMENTS
23
PTAB DEVELOPMENTS
23 Government Arguments
Potentially Open
Constitutional Can
of Worms Regarding
PTAB Appointments
25 Supre me Court Preserves
PTAB But Requires
USPTO Director Discretionary
Review of PTAB Decisions
28 Fede ral Circuit Narrows
Scope of Pr ior Art
Available for Desi gn Patents
30 PTAB Emphasizes
Expert Availability and
Clarifies Fintiv Inquir y for
Prior Distri ct Court Cases
32 USPTO Introduces Pilot
Program to Defe r Response
to Subject Matter
Eligibility Rejections
3
ANNUAL PTAB DIGEST
As of 2021, post-grant proceedings h ave been in use for nine years.
Designed as an alternative to district cour t litigation, post-grant
proceedings have offered litigan ts a faster and more cost-effective
forum for resolving patent validity disp utes. In turn, the US Patent Trial
and Appeal Board (PTAB or Board) continues to be o ne of most popular
venues for litigating patent disputes, with m ore than 13,700 petitions
filed since 2013.
Even with this foundation, post-grant proceeding s continue to evolve—
both procedurally and substantively—from year to year, and 2021 was
no exception. In the last year alone, th e US Supreme Court gave the
USPTO director the right to review decisions made by adm inistrative
patent judges (APJs) at the PTAB after finding that their unreviewable
authority violates the Appointm ents Clause; the US Court of Appeals
for the Federal Circuit furthe r narrowed the scope of prior art available
for design patents; and the PTAB clarified that a validit y determination
from a prior district court litig ation does not automatically warrant
discretionary denial of inter par tes review (IPR) under the Fintiv factors.
Amid these changes, Morg an Lewis has helped clients navigate each
stage of post-grant proceedings. We have represe nted both patent
owners and petitioners in post-grant pro ceedings at the US Patent and
Trademark Office (USPTO). In fact, we handled the se cond-ever IPR
proceeding argued in front of th e USPTO. Routinely recognized as a top
practice by organizations such as Jur istat, Patexia, Managing Intellectual
Property, and The Legal 500 US, the Morgan Lewis post-grant
proceedings team consists of law yers with patent litigation experience
and technical knowledge spanning n umerous disciplines. Several of our
team members have been fur ther recognized as leading IP
professionals, key trailblazers, and som e of the top industry-focused
practitioners in the field .
Morgan Lewis stays focused on our clie nts’ objectives and the need for
regular and consistent communicatio n in an ever-shif ting legal
landscape. As par t of that effort, our PTAB working group compiles
Morgan Lewis’s annual PTAB Digest to help clients stay apprised of new
PTAB developments.
This year’s PTAB Digest provides an overview of PTAB statistics, trends,
and updates that impact strategie s and business decisions for patent
owners and petitioners alike. Ple ase feel free to reach out to us if you
have any comments, questions , or suggestions, or would like to hear
more about our PTAB experience.
INTRODUCTION
PHILADELPHIA
Louis W. Beardell, Jr.
IP Practice Leader
SILICON VALLEY
Dion Bregman
PTAB Working Group Leader
Michael J. Lyons
Andrew J. Gray IV
CENTURY CITY
Andrew V. Devkar
CHICAGO
Michael J. Abernathy
Scott D. Sherwin
Krista Vink Venegas, Ph.D.
Jason C. White
HOUSTON
C. Erik Hawes
ORANGE COUNTY
Kenneth Cheney
SAN FRANCISCO
Brent A. Hawkins
WASHINGTON, DC
Jeffrey G. Killian, Ph.D.
Collin W. Park
Robert Smyth, Ph.D.
WILMINGTON
John V. Gorman
