Patent Trial and Appeal Board Finds it Has Discretion to Dismiss Contested IPR

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The author reviews a recent unusual PTAB scenario—the inter partes review petitioner successfully stopped an IPR proceeding, which the patent owner wanted to continue, before the board reached a trial-institution decision—and identifies reasons why petitioners may consider making the request.

United States Intellectual Property

For the first time since it began implementing America Invents Act post-grant proceedings, the Patent Trial and Appeal Board, on Dec. 9, 2015, terminated and dismissed pending inter partes review (IPR) petitions at the unilateral request of the petitioner, and over the patent owner's objection, in a circumstance where termination ended all board review of the challenged claims.1 In so doing, the board adopted an expansive reading of 37 C.F.R. § 42.71(a), under which it suggested it can ''grant, deny, or dismiss'' any petition discretionarily, even where no other proceeding challenging the same claims is pending.

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Originally published by BNA's Patent, Trademark & Copyright Journal, December 2015

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