Grounds asserted by a petitioner in an IPR, but not instituted (“non-instituted grounds”) can be a source of frustration for the petitioner and the patent owner alike. Frequently, not all grounds asserted in an IPR will be instituted by the Patent Trial and Appeal Board (“the Board”). For the petitioner, non-instituted grounds may be a source of concern, especially if future petitions are time-barred, and/or if the instituted grounds represent only a single invalidity position (e.g., anticipation under 102, but not obviousness under 103). For the patent owner, non-instituted grounds leave unanswered questions about whether and future IPRs might be filed. Continue Reading The Problem of Non-instituted Grounds, Part I – “Could Have,” Would Have, Should Have
Jennifer Bush focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.
In addition to providing legal services for her clients, Jennifer is a Lecturer-in-Law at the University of California, Davis School of Law, where she teaches patent prosecution and practice. She is also a member of the faculty at the Practicing Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution boot camp. She has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law.