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