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PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review. In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition.  See General Plastic Industrial Co., Ltd. … Continue Reading

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding.  The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the … Continue Reading

State University Patents Are Not Immune from Inter Partes Review

The Federal Circuit on June 14 affirmed Patent Office decisions in inter partes review (IPR) proceedings canceling patents the University of Minnesota owned, concluding that “state sovereign immunity does not apply to these proceedings.” The court’s conclusion is not limited to instances where, for example, a state university waives its sovereign immunity by asserting a … Continue Reading

Estoppel Remains Malleable

A few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office’s views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). We noted then that this is an estoppel a district court may apply, but the Patent Office may not. In response to the … Continue Reading

“Your Call”: Fed. Cir. Says OK not to Reconsider Despite Remand

In Dell, Inc. v. Acceleron, LLC, 884 F.3d 1364 (Fed. Cir. 2018), the Federal Circuit determined that the Patent Trial and Appeal Board was not required to consider arguments first presented by the petitioner at oral argument, despite having remanded an earlier appeal of the Board’s decision for that very purpose. In that earlier appeal, … Continue Reading

Confusion and Delay

In Oil States Energy Services., LLC v. Greene’s Energy Group, LLC, Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or the Seventh Amendment of the Constitution. 138 S. Ct. 1365 (2018). But his opinion for the majority invited confusion and delay, … Continue Reading

IPR Estoppel Does Not Apply to ITC Investigative Staff

Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While … Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to … Continue Reading

PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims. The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board … Continue Reading

One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

Update: The Supreme Court issued an order on June 24, 2019, granting a petition for a writ of certiorari to review the Federal Circuit’s judgment in Dex Media, Inc. v. Click-to-Call Technologies, LP,  899 F.3d 1321 (Fed. Cir. 2018). The Court will decide “[w]hether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to … Continue Reading

Trial Practice Guide Updates and Future Fee Increases

Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in … Continue Reading

Federal Circuit Affirms Tribal Sovereign Immunity Does Not Apply to IPR

The Federal Circuit recently affirmed the PTAB’s decision that tribal immunity cannot be asserted in an IPR (Saint Regis Mohawk Tribe v. Mylan Pharma Inc., Case No. 2018-1638 (Fed. Cir. July 20, 2018). On appeal, Allergan, Inc. (“Allergan”) argued that the Board improperly denied its motion to withdraw from IPR proceedings, and the Saint Regis … Continue Reading

Mixed Result Upheld in Personal Audio IPRs

The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).… Continue Reading

PTAB May Cite New References Not Cited in the IPR Petition

In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB’s reliance on references not included in the original petition did not violate due process or the patent owner’s procedural rights under the Administrative Procedure Act (APA).  Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018). Citing … Continue Reading

Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations

On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi … Continue Reading

Inventor’s Uncorroborated Testimony Not Sufficient to Swear Behind Reference

Attempting to “swear behind” an alleged prior art reference has been common practice in IPRs, going back to the first IPR, Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001 (PTAB 2013), aff’d sub nom. In re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed Tech., LLC v. … Continue Reading

The Supreme Court Finds IPR Proceedings Constitutional

Inter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the … Continue Reading

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. Iancu, 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 Circuit’s … Continue Reading

Is the PTAB Bound by a Prior Federal Circuit Claim Construction?

In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in … Continue Reading

Precedential and Informative Board Decision on Serial IPR Petitions

Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part … Continue Reading

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being … Continue Reading
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