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ARTICLE · 13 MAY 2019

PTAB Issues Two New Precedential Opinions On Discretion To Deny Review – Implications For Generics

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Valve Corp. v. Electronic Scripting Prods., Inc. addresses follow-on petitions.

United StatesLitigation, Mediation & Arbitration
Oblon, McClelland, Maier & Neustadt, L.L.P
Oblon, McClelland, Maier & Neustadt, L.L.P
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The PTAB designated two decisions as precedential this week (in addition to several in previous weeks), both relevant to the Board's discretion to deny review. These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. See my previous posts on other recent precedential decisions here and here.

Valve Corp. v. Electronic Scripting Prods., Inc. addresses follow-on petitions. Follow-on or serial petitions are regularly criticized by patent owners as harassment, requiring them to defend their patent repeatedly. In 2017, the PTAB made the General Plastic case precedential, where the Board enumerated seven non-exhaustive factors it would consider when deciding whether to allow follow-on petitions. In short, the factors are:

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