PTAB May Institute Re-Examination Even Where Requester Wants It Denied

Author:Mr Hersh Mehta
Profession:McDermott Will & Emery

The US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) properly instituted an inter partes re-examination even though the requester had asked it to deny institution and had admitted that its request did not meet the institution standard. In re: AT&T Intellectual Property II, L.P., Case No. 16-1830 (Fed. Cir., May 10, 2017) (Reyna, J).

Two days before the inter partes review procedures went into effect, LG filed a request for inter partes re-examination of an AT&T patent directed to video data compression. Before the PTAB decided whether to initiate re-examination, LG sought to have its re-examination request denied, stating that it did "not believe there is a reasonable likelihood of prevailing with respect to any of the claims challenged in the Request." Two weeks later, the PTAB granted LG's initial request for inter partes re-examination. During the re-examination, LG withdrew from the proceedings. The PTAB nevertheless found the challenged claims anticipated. AT&T appealed.

On appeal, AT&T argued that the PTAB improperly instituted re-examination because LG had requested that its re-examination request be denied and as a result there was no requester or request. The US Patent and Trademark Office (PTO)...

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