Fish's John Dragseth Quoted in Law360 Article "PTAB Appeals Face Tough Road After Latest Fed. Circ. Ruling"

John Dragseth(Principal, Minneapolis, MN) wasquoted in Law360article, "PTAB Appeals Face Tough Road After Latest Fed. Circ. Ruling."

"People will still pick away around the edges," since Cuozzo held that appeals from decisions to institute are not completely barred, said John Dragseth of Fish & Richardson PC. "But the Husky decision laid down some lines that mean there's much less room at the Federal Circuit to do that."

However, the few examples the Supreme Court gave for possible grounds for appeal are unlikely to occur in real life, Dragseth said. For instance, the justices said it would be appealable if the board instituted review on the ground that a patent is indefinite, an issue the AIA specifically says it has no authority to review.

"I haven't seen a hypothetical flagrant act by the board that is something anyone believes the board would ever do," Dragseth said. "If you anticipate the board doing those things, you're not giving the board much credit."

"Often, the person with the most motivation to challenge a patent is the inventor," Dragseth said.

For a new business in this situation, getting off the ground with no revenue, the decision offers a way to challenge the validity of potentially problematic patents in an inter partes review that they could not challenge in court, Dragseth noted. If the challenge is successful, the company can move forward without fear of a lawsuit, and if it is not, it can plan accordingly to avoid the patent.

“In that situation, it's very important. Those companies often don't have a lot of money, so IPR is a superior route for them compared to getting sued,” he said.

To read the entire article from Law360, click here.