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Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. ComplementSoft, LLC, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal … Continue Reading

Play the Claim

Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an … Continue Reading

ODP Dooms CIP

In re Janssen Biotech, Inc., Appeal 2017-1257 (Fed. Cir. Jan. 23, 2018), is a cautionary tale concerning patents protecting a blockbuster drug providing patients an important therapy and bringing its owners billions of dollars in annual revenue. It began twenty-five years ago with a then-unremarkable decision to file a patent application. The filed application was … Continue Reading

PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

In Wi-Fi One, LLC v. Broadcom Corporation, an en banc panel of the Federal Circuit decided on January 8, 2018, that the PTAB’s application of the 35 U.S.C § 315(b) time bar to institution of inter partes review (IPR) proceedings is reviewable on appeal. The decision overrules Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d … Continue Reading

Petitioners Will Pay More for Immensely Popular AIA Trials

In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will … Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan

The Federal Circuit recently vacated the PTAB’s decisions in three interferences. Board of Trustees of Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, Appeal 2015-2011 (Fed. Cir. June 27, 2017). These interferences concern which parties’ inventors first conceived methods for diagnosing fetal aneuploidies using cell-free fetal DNA from maternal blood samples. The PTAB … Continue Reading

Supreme Court to Decide Whether IPRs Violate Article III and the Seventh Amendment

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional The Supreme Court issued an order on June 12, 2017, indicating it will review the Federal Circuit’s judgment in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, 639 Fed. Appx. 639 (Fed. Cir. 2016) (link).  The petition … Continue Reading

Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims

An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 … Continue Reading

Federal Circuit to PTAB: Prior Art Cannot Anticipate Absent Disclosure of All Claimed Features

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), the Federal Circuit issued a precedential opinion explaining that a prior art reference cannot anticipate a patent claim if the reference does not disclose all claimed features. That straightforward explanation of black letter law was prompted by a PTAB … Continue Reading

Claims Construed and Canceled as Patent Nears its Expiration Date

In MPHJ Technology Investments, LLC v. Ricoh Americas Corp., Appeal 2016-1243 (Fed. Cir. Feb. 13, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling all eight claims in U.S. Patent No. 8,488,173. The patent issued from an application that was the tenth continuation-in-part of a 20-year-old application that relies for priority on seven … Continue Reading

District Court Interprets the IPR Estoppel Provision Narrowly

Update (Jan. 13, 2017): The Delaware district court issued a short order on Jan. 11, 2017, maintaining the court’s earlier decision discussed in the post below. An AIA trial is a relatively-inexpensive, partial substitute for challenging the validity of a patent. Yet, prospective AIA trial petitioners routinely struggle with the potential estoppel effect of not raising prior … Continue Reading

The Federal Circuit’s Disagreement About What Constitutes “Substantial Evidence”

As a standard of appellate review, “substantial evidence” is not peculiar to the Federal Circuit’s review of patent decisions from district courts and the Patent Office. All circuit courts are familiar with that review standard. They apply it routinely in deciding appeals. The standard originated with appeals of jury verdicts, in recognition of the role … Continue Reading

Patent Office Proposes to Increase AIA Trial Fees

In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below). According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time barred. Wi-Fi One, LLC v. Broadcom Corp., … Continue Reading

PTAB Bar Association Officially Launched

We are pleased to share that the new Patent Trial & Appeal Board (PTAB) Bar Association launched Friday, September 16, 2016.  The organization will provide a forum for communications between the legal community and PTAB officials and its Administrative Patent Judges (APJs), particularly to share best practices and stay abreast of the rule making, procedure and jurisprudence … Continue Reading

Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

On August 12, 2016, the Federal Circuit issued an order vacating its decision in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and reinstating the appeal after granting the aggrieved patent owner’s petition for rehearing en banc.  We wrote about this decision a few months ago: The Federal Circuit confirmed in a … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading

Supreme Court Vacates Federal Circuit Decision that Refused to Review PTAB’s Application of the Time Bar to AIA Trials

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc In a non-precedential decision late last year, the Federal Circuit dismissed a patent owner’s appeal of a Patent Trial and Appeal Board decision that refused to apply a statutory time-bar to deny institution of an inter … Continue Reading

On the Clock: Appellate Standard of Reviewing PTAB’s AIA Trial Decisions

Now that Cuozzo Speed Techs., LLC v. Lee has been submitted to the Supreme Court, the next issue that may well make its way to the Court is the propriety of the Federal Circuit’s standard of reviewing the PTAB’s AIA trial decisions. Currently, the Federal Circuit reviews these decisions for substantial evidence. At least four … Continue Reading

No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review

NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., … Continue Reading
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