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
The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent...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
Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed...more
In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more
10/6/2017
/ Appeals ,
Burden of Persuasion ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Remand ,
Reversal ,
USPTO
Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more
8/2/2017
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...more
6/21/2017
/ Administrative Procedure ,
Inadmissible Evidence ,
Inter Partes Review (IPR) Proceeding ,
Newly Discovered Evidence ,
Novo Nordisk ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Prior Art ,
Supplemental Information
The en banc Federal Circuit is currently considering whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar on IPR petitions can be reviewed on appeal. In Wi-Fi One v. Broadcom Corp, the en banc Court is set...more
5/12/2017
/ § 315(b) ,
Appeals ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Limitation Periods ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents
As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In Tinnus Enterprises LLC...more