Tag Archives: Institution

First Derivation Proceeding Instituted by PTAB

March 13, 2018, marked the fifth anniversary of the transition from the previous “first to invent” system to the AIA’s “first to file” regime.  The PTAB seemingly marked the occasion by instituting the first ever derivation proceeding one week later in Anderson Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 32 (March 21, 2018). … Continue Reading

En Banc Rehearing Petition Denied – PTAB Retains Authority to Institute IPR and Issue Final Decision

We previously reported on the Federal Circuit’s decision that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions in Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).  Last week, in a 10-1 decision, the Federal Circuit denied Ethicon’s petition for rehearing en banc.… Continue Reading

Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

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?  … Continue Reading

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 … Continue Reading