Discretion to institute IPRs is vested in the Director and not directly appealable, but until recently was not exercised often to deny cases with merit. In the past three years, however, the PTAB has laid down de facto rules all focused on the behavior of the Petitioner, and all directing the Office to deny even challenges with merit for various policy reasons—like parallel district court trials, previous unrelated challenges or supposed resource concerns. While legally non-binding, the Office has created detailed legal tests that all look to the behavior or status of the petitioner, and ignore that of the patent owner. The new rules resulted in 10% of last year's denials—a 10-fold increase from the previous year—while Board filings and revenues have fallen considerably during the same timeframe. At the same time, District Court filings in the Western District have skyrocketed, as NPEs flock to the favorable forum.

In this month’s iteration of a webinar series hosted by Unified Patents, Partner Joshua Stern and co-panelists Jonathan Stroud, Chief IP Counsel for Unified Patents and Mark Taylor, Assistant General Counsel for Microsoft will present on recent changes to § 314 and § 325, focusing on General Plastics, NHK Spring, the data and practice tips around them, and discuss the possibility of future APA challenges to the de facto rules. They will also look to the factors in patent owner's behavior that the Board is free to consider and recommend changes.