SOUTHFIELD, Mich. – Brooks Kushman shareholder Andrew Turner was quoted in a recent Law360 article on March 26, 2020 titled, “3 Takeaways From Precedential PTAB Decisions on Denials.”
In this article, experts discuss two decisions that the Patent Trial and Appeal Board (PTAB) recently designated as precedential and one designated as informative, and what attorneys can learn from these decisions. These decisions show that the Board’s discretion to deny a petition for raising art or arguments that are similar to those previously presented to the USPTO under 35 U.S.C. § 325(d) has a two-part framework, discretion is now more expansive, and that the details about parallel litigation are key.
As Andy mentions in the article, these decisions provide a useful spectrum of 325(d) decisions for both petitioner and patent owner, because the PTAB has not designated many decisions on this issue recently. He also notes an important takeaway for Petitioners is that “if you’re going to raise the exact same art that the examiner evaluated, you’d better have a good argument that the examiner missed something.”
Regarding discretion being more expansive, Andy specifically analyzes the impact the Advanced Bionics decisions has on future cases. He discusses how the board is expanding the Becton Dickinson Prior Examination Factors to prior AIA Trials. “This opens up new arguments for patent owners in their preliminary response,” he concludes.
Andy Turner is a Co-Chair of Brooks Kushman’s Post-Grant Proceedings practice. He holds degrees in both electrical and mechanical engineering and focuses his practice on post-grant proceedings and patent prosecution. His practice encompasses a range of technical areas, including automotive, electronics, audio/lighting systems, and telecommunications.
Andy represents petitioners and patent owners in post-grant proceedings and has handled over 30 of these proceedings. He was successful in cancelling hundreds of claims for petitioners, and in challenging substitute claims proposed in a contingent motion to amend. Andy has successfully defended patent owners at the PTAB, including securing decisions denying institution. Andy also has experience with litigation related to IPRs, and has appeared in over 20 IPR appeals to the Federal Circuit and in an investigation before the International Trade Commission.
To read the full article, click here.
About Brooks Kushman P.C.
Brooks Kushman P.C. is a premier intellectual property (IP) and technology law firm dedicated to the advancement and protection of innovations and brands that propel businesses around the world. With offices in Michigan and California, we work alongside corporations, small to medium sized businesses, and leading universities to protect their intellectual property assets. Our attorneys have a broad range of experience in industries and technologies, including consumer electronics, manufacturing, medical device, computer technology, aerospace, chemicals, biotechnology, and retail.
Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, and Intellectual Property Today. For more information, please visit www.BrooksKushman.com.