COSTA MESA, CALIF.—The numbers don’t lie: A growing number of patent owners are seeking to narrow their patent claims in inter partes review proceedings before the Patent Trial and Appeal Board, instead of submitting their filings to a yes-or-no vote. Womble Bond Dickinson has been tracking this trend, and shared his findings with Law.com’s “Skilled in the Art” column.
According to Babcock, the number of motions to amend filed with the PTAB have increased from 47 in 2016 to 73 in 2017 to 100 in 2018. Filings are on track to reach 120 this year. This trend represents a significant change in philosophy for the PTAB as compared to the 2012-15 time period.
“It turns out there's a nice upward trend,” Babcock tells Law.com IP reporter Scott Graham. “I think patent owners are being a little more courageous in filing motions to amend, and counsel are trying to encourage their clients to get something out of the process.”
“They're giving the patent owner several bites here to get something that works. If more patent owners can walk away with some claims, that makes the board look better in patent owners’ eyes.”
Click here to read “Making Amends at the PTAB” at Law.com.
Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.