The Federal Circuit Endorses a Holistic Approach to Patentability in Post-Grant Proceedings

In recent decisions, the U.S. Court of Appeals for the Federal Circuit has nudged the Patent Trial and Appeal Board (PTAB) to exercise broader discretion when making patentability decisions. In an article written for Bloomberg BNA, Faegre Baker Daniels associates Rick Marsh and Braden Katterheinrich observed that recent Federal Circuit holdings “have sustained the PTAB’s ability to exercise its ‘expertise’ in considering more than just the particular arguments raised by the parties.” Marsh and Katterheinrich explained that patent owners and petitioners should be prepared to adjust their strategies in light of the PTAB’s more “holistic approach.”

“As a result, participants in an IPR or CBM proceeding should consider the entire factual record—and not just the specific grounds and arguments presented by the parties," the article said. "Under this approach, patent owners may benefit from having their expert address potential alternative grounds of unpatentability that could be supported from the evidence on the record. Similarly, in some situations, petitioners that submit expert declarations with detailed explanations for obviousness as well as anticipation may find additional arguments to support their cases.”