The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity. The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision? A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions. Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).
Continue Reading Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision
CAFC Confirms Constitutionality of Inter Partes Review
The Federal Circuit rejected a patentee’s appeal arguing that inter partes review is unconstitutional for violating Article III and the Seventh Amendment right to a jury trial. MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091 (Fed. Cir. December 2, 2015). The precedential decision affirms the PTAB’s authority to adjudicate the validity of issued patents.
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IPR Institution Decision Precluded as Evidence in Litigation, Again
No precedential Federal Circuit decision addresses the effect of an IPR institution decision on parallel litigation tried 
before a jury. As a result, some district courts have allowed IPR institution decisions regarding a patent-in-suit to be presented as evidence in a pending litigation (see Evidence of Denial of IPR Institution Allowed in District Court Infringement Action), while many have not.
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USPTO Proposes Single APJ Pilot Program for IPR Institution
Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided. 
Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial. The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits.
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Federal Circuit Confirms Broadest Reasonable Interpretation Standard
A sharply divided Federal Circuit denied Cuozzo Speed Technology’s petition for rehearing en banc on the Broadest Reasonable Interpretation (BRI) standard used in Inter Partes Review (IPR). 
Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna voted for en banc review, but could not persuade Judges Lourie, Dyk, Wallach, Taranto, Chen, and Hughes to reconsider In re Cuozzo Speed Tech (Fed. Cir. 2015). According to the dissent, IPR should employ the same claim interpretation standard as district court litigation because:
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Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing
Defendants in litigation seeking to take advantage of IPR must file a petition within one year of the date of service of the complaint alleging patent infringement. Defendants may be tempted to delay filing the IPR petition to avoid revealing strategy early in the litigation proceeding. Delaying the filing, however, may risk the granting of a stay of the related litigation, as highlighted by four district court decisions¹ issued last week.
Continue Reading Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing
Real Party in Interest – A Strategy For Attacking IPR Petitions.
Recent statistics suggest that approximately two thirds of claims challenged in IPR proceedings are held to be invalid by the PTAB. For PTAB trials instituted on petitions filed in Art Unit 1600 at the U.S. Patent and Trademark Office, which examines patent applications in the biotechnology and pharmaceutical arts, 100% of the final decisions rendered in the first two years of IPRs resulted at least one of the challenged claims being cancelled. For patent owners, avoiding IPR institution can be critical.
Continue Reading Real Party in Interest – A Strategy For Attacking IPR Petitions.