Discretionary institution

Haynes and Boone’s David McCombs, Eugene Goryunov, Jonathan Bowser and Jolene Robin-McCaskill explore criteria used by PTAB to determine whether to institute later petitions

David McCombs, Eugene Goryunov, Jonathan Bowser and Jolene Robin-McCaskill - Haynes and Boone

The US Patent Trial and Appeal Board (board) has discretion whether to institute a trial on an inter partes review (IPR) or post-grant review (PGR) petition. ¹ The board may deny institution for reasons unrelated to the merits of the patentability challenges. For example, the board may deny a “follow-on” petition, filed by a second petitioner, after it has already considered an earlier petition, filed by a first petitioner, when there is a “significant relationship” between the first and second petitioners. This article reviews board decisions that identify factual circumstances that have led to a finding of a “significant relationship” and a discretionary denial, and those that have not.