Jeff Vockrodt discusses recent decision on unpatentability grounds in an article by Managing IP

Jeff B. Vockrodt, a partner in Culhane Meadows’ New York office, was recently interviewed for an article by Managing IP which discusses the recent decision by the Precedential Opinion Panel on the Patent Trial and Appeal Board’s (PTAB) grounds of unpatentability.

Here are some excerpts from Jeff’s interview:

PTAB can raise own unpatentability grounds, but not often

The Patent Trial and Appeal Board should only raise its own grounds of unpatentability against proposed substitute claims in rare circumstances, the Precedential Opinion Panel set out on Monday

The panel, which decides matters of exceptional importance to the PTAB, said in its precedential opinion that the board should typically stick to the claims raised by a patent challenger.

The decision stemmed from the inter partes review (IPR) in Hunting Titan v DynaEnergetics, where DynaEnergetics had alleged that Hunting obtained and used its confidential information relating to the DS Trinity System, an eight-inch perforating gun used in the oil and gas industry.

Jeff Vockrodt, partner at Culhane Meadows in New York, noted that this opinion embraced the adversarial nature of IPRs at the PTAB, and that it will be interesting to see whether this policy affects other issues.

“This decision further strengthens patent owners’ positions in IPR, reducing the risk that the PTAB will come up with its own reasons for denying motions to amend,” he said.

The complete article can be found here.


About Culhane MeadowsBig Law for the New Economy®
The largest woman-owned national full-service business law firm in the U.S., Culhane Meadows fields over 70 partners in ten major markets across the country. Uniquely structured, the firm’s Disruptive Law® business model gives attorneys greater work-life flexibility while delivering outstanding, partner-level legal services to major corporations and emerging companies across industry sectors more efficiently and cost-effectively than conventional law firms. Clients enjoy exceptional and highly-efficient legal services provided exclusively by partner-level attorneys with significant experience and training from large law firms or in-house legal departments of respected corporations. U.S. News & World Report has named Culhane Meadows among the country’s “Best Law Firms” in its 2014 through 2020 rankings and many of the firm’s partners are regularly recognized in Chambers, Super Lawyers, Best Lawyers and Martindale-Hubbell Peer Reviews.


The foregoing content is for informational purposes only and should not be relied upon as legal advice. Federal, state, and local laws can change rapidly and, therefore, this content may become obsolete or outdated. Please consult with an attorney of your choice to ensure you obtain the most current and accurate counsel about your particular situation.

*Culhane Meadows is ranked by U.S. News/Best Law Firms in Technology Law, Bankruptcy/Reorganization Law, and Information Technology Law. This website and the communications herein may be considered attorney advertising. Previous results are not a guarantee of future outcome. This website is for informational purposes only and does not constitute legal advice. The information herein is not intended to create an attorney-client or similar relationship. Please do not send us unsolicited confidential information. Whether you need legal services and which lawyer or law firm you select are important decisions that should not be based on this website alone.