Reconsideration Of Final PTAB Decision Is Rarely Worth It

Law360, New York (December 7, 2015, 1:46 PM EST) -- A question being raised more and more frequently by post-grant practice practitioners and parties recently is whether seeking reconsideration of final written decisions ("FWDs") by the Patent Trial and Appeal Board in inter partes review and covered business method review proceedings is worth the time, effort and expense. As IPR and CBM proceedings only began following the passage of the America Invents Act in September 2011 and took 18 months to proceed to final written decisions, there was originally little guidance based upon previous proceeding as to the potential success and utility of seeking reconsideration of FWDs. The relative success of the post-grant proceedings has resulted in an increasing number of petitions being filed before the PTAB, from 58 IPR and seven CBM petitions per month in 2013 to 125 IPR and 14 CBM petitions per month in 2014.[1] Since the majority of these petitions are instituted and result in FWDs, there is an increasing dataset to review when considering the potential strategic and tactical advantages in requesting reconsideration of a FWD versus merely proceeding directly to an appeal to the Federal Circuit....

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