St. Louis patent attorney Doug Robinson provides commentary about key trends at the Patent Trial and Appeal Board (PTAB) and their effects on medical device companies in a new article published on the Medical Design Briefs website.

According to the article, medical device companies have challenged thousands of patents since the PTAB was introduced in 2012. New data from the PTAB suggests companies will file fewer patent challenges at the PTAB this year compared to last year, however, with as much as 24% fewer filings reaching the Board.

Why the shift in PTAB filings? The PTAB itself appears to be making it harder for challengers to win at trial. Lower odds for success mean fewer companies willing to try.

“Current trends favor patent owners,” says Robinson. “More specifically, the rules and standards for Inter Partes Reviews have shifted over the past few years in ways that favor patent owners. These changes have been based on formal rulemaking as well as PTAB decisions designated as ‘precedential’ by the Patent Office.”

Robinson highlights the October 2018 rule that changed the claim construction standard from the broadest reasonable interpretation to the Phillips standard (which is the standard applied in litigation and is more beneficial to a patentee facing an invalidity challenge) as a key cause of the shift in PTAB trends.

Medical device companies will also need to keep an eye on future decisions, such as the Precedential Opinion Panel’s pending decision in Hulu, LLC v. Sound View Innovations, LLC which will address “printed publication” standards.

“This is an important issue,” says Robinson. “Whether something is sufficiently publicly accessible to qualify as a ‘printed publication’ matters for whether that document qualifies as prior art. When non-patent documents are involved (for example, presentations at scientific conferences), the question of whether an IPR is instituted can hinge on whether the document should be considered a printed publication. This is especially important to medical device companies, which often face invalidity challenges based on scientific presentations.”

Takeaway

While patent owners should probably be less worried about IPRs overall, each individual case has the potential to go against the overall trend. “The best strategy is to be prepared. Study the reasons why PTAB panels reject petitions on both substantive and procedural grounds, and use that knowledge if an IPR is filed against your company.”

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