Jeff Vockrodt discusses recent decision on unpatentability grounds in an article by Managing IP

Jeff Vockrodt discusses recent decision on unpatentability grounds in an article by Managing IP

Jeff B. Vockrodt, a partner in Culhane Meadows’ New York office, was recently interviewed for an article by Managing IP which discusses the recent decision by the Precedential Opinion Panel on the Patent Trial and Appeal Board’s (PTAB) grounds of unpatentability.

Here are some excerpts from Jeff’s interview:

PTAB can raise own unpatentability grounds, but not often

The Patent Trial and Appeal Board should only raise its own grounds of unpatentability against proposed substitute claims in rare circumstances, the Precedential Opinion Panel set out on Monday

The panel, which decides matters of exceptional importance to the PTAB, said in its precedential opinion that the board should typically stick to the claims raised by a patent challenger.

The decision stemmed from the inter partes review (IPR) in Hunting Titan v DynaEnergetics, where DynaEnergetics had alleged that Hunting obtained and used its confidential information relating to the DS Trinity System, an eight-inch perforating gun used in the oil and gas industry.

Jeff Vockrodt, partner at Culhane Meadows in New York, noted that this opinion embraced the adversarial nature of IPRs at the PTAB, and that it will be interesting to see whether this policy affects other issues.

“This decision further strengthens patent owners’ positions in IPR, reducing the risk that the PTAB will come up with its own reasons for denying motions to amend,” he said.

The complete article can be found here.

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