John Pegram Quoted in World Intellectual Property Review Article, "Mixed Fortunes for the Appeals Boards."

John Pegram, Senior Principal, quoted in World Intellectual Property Review article, “Mixed Fortunes for the Appeals Boards,” May 15, 2018.

Pegram believes the grant of certiorari in Oil States attracted attention particularly because of several reversals by the Supreme Court in recent patent cases.

"Some people believed that the grant of certiorari in a patent case suggests a probability of reversal; the Oil States decision has proved that wrong," Pegram says.

"Rather, the court took this opportunity to resolve a recurring question of the propriety of patent claim cancellation by the executive branch, rather than invalidation by a court, finding the PTAB review procedure constitutional.

"Also, Oil States raised an interesting and unusual legal issue of whether patents are private or public property, which has attracted attention, particularly in academic circles. The court properly concluded that its 19th century decisions on the subject were governed by the Patent Act of 1870, which did not grant the same cancellation authority to the US Patent and Trademark Office as has been granted to it by Congress in recent years."

In the second decision, issued on the same day as Oil States, the US Supreme Court said that the PTAB cannot choose to review only some challenged claims in an IPR it must assess them all thereby reversing the previous practice.

“The decision is a ‘game-changer’ and ‘truly creates a mess by potentially creating a massive amount of needless work’.”

Discussing the balance of power at the PTAB, Pegram says statistics indicate that the PTAB favours neither patent owners nor challengers. A Fish & Richardson study found that in 52% of cases, all challenged claims survived the final IPR review. In another 21% of cases, at least one, but not all, of the challenged claims survived. All challenged claims were found unpatentable in only 27% of cases decided by the board, Pegram says, claiming that these statistics appear to be balanced.

"If anything, my experience and the relatively high rates of partial or total non-institution indicate that the PTAB is procedurally tougher on petitioners, who have the burdens of proof," he adds.

Pegram says there is no need to improve the balance at the PTAB, while wider reform is also unnecessary and would actually be a mistake.

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