The Supreme Court will not consider a challenge to the proper scope of AIA statutory estoppel, leaving the Federal Circuit’s governing interpretation in place. The Court’s June 26, 2023 order list denied the pending petition...more
The Federal Circuit has upheld the PTAB’s relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an unpatentability...more
The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB)....more
A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why....more
On April 24, 2018, in SAS Institute Inc. v. Iancu, a closely divided U.S. Supreme Court fundamentally changed the way that the Patent Trial and Appeal Board confronts inter partes reviews under the America Invents Act. The...more
6/18/2018
/ Administrative Proceedings ,
America Invents Act ,
Chevron Deference ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS
The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions)...more
4/11/2018
/ America Invents Act ,
Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Venue
There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v. Automated Creel...more
In yesterday’s en banc decision in Wi-Fi One v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit addressed issues regarding judicial review of the PTAB’s time-bar...more
1/10/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO