Last month, in Federal Express Corp. v. Qualcomm Inc., Appeal No. 2024‑1236 (Fed. Cir. Apr. 29, 2026), the Federal Circuit again addressed the reach of the statutory bar on its review of Patent Trial and Appeal Board decisions to institute inter partes reviews. The case arose from Qualcomm’s IPR petition challenging a FedEx patent
Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. § 315(b) (see here, here, here). But a patent owner’s time-bar challenge must be timely raised before the PTAB, and may be waived if raised for the first time on appeal.
Continue Reading Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal
Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent.” As we have discussed, PTAB decisions on whether § 315(b) has been satisfied are reviewable on appeal.
Continue Reading Petitioner Has Burden of Persuasion on Real Party in Interest
It is undisputed that institution of an inter partes review (IPR) is time-barred under 35 U.S.C. § 315(b) if the petition is “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent. The Court of Appeals for the Federal Circuit recently determined that the Patent Trial and Appeal Board’s time bar determinations are appealable. Since that decision, whether a party is considered “a privy of the petitioner” has been the source of recent dispute.
Continue Reading Federal Circuit Upholds Board’s Use of Control Standard of Privity to Assess Time Bar
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 Mohawk Tribe (“the Tribe”) argued that the Board improperly denied its motion to terminate the IPR based on sovereign immunity. See Mylan Pharma Inc. v. Saint Regis Mohawk Tribe, Case IPR2016-01127, Paper 130 (February 23, 2018) (discussed here).
Continue Reading Federal Circuit Affirms Tribal Sovereign Immunity Does Not Apply to IPR
In Application in Internet Time v. RPX Corp., Nos. 2017-1698, -1699, -1701 (Fed. Cir. July 9, 2018), the Federal Circuit decided that the Patent Trial and Appeal Board “applied an unduly restrictive test for determining whether a person or entity is a ‘real party in interest’ within the meaning of [35 USC] § 315(b) and failed to consider the entirety of the evidentiary record in assessing whether § 315(b) barred” IPRs petitioned by RPX more than one year after one of its clients, Salesforce.com, Inc. (Salesforce), was served with a complaint for infringing the challenged patents. Based on these decisions, the court vacated the Board’s final written decisions that canceled the challenged claims. The court’s decision is important if only because it offers guidance in determining how a non-party may be a real party in interest or in privity with a petitioner.
Continue Reading Federal Circuit Admonishes PTAB for Taking Short-cuts
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 One’s second petition for panel or en banc rehearing regarding 35 U.S.C. § 315 (b) time-bar challenges. See Wi-Fi One, LLC v. Broadcom Corp., Case No. 2015-1944, Doc. No. 210 (May 21, 2018).
Continue Reading Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations
In late March, the Federal Circuit issued an order staying the PTAB proceedings concerning numerous related IPRs of patents issued to Allergan, Inc. (“Allergan”), but assigned to the Saint Regis Mohawk Tribe (“the Tribe”). These IPRs were headed toward a final hearing on the merits previously scheduled for April 3rd. In those IPRs, the PTAB denied the Tribe’s motions to terminate the proceedings based upon the Tribe’s sovereign immunity. Mylan Pharma Inc. v. Saint Regis Mohawk Tribe, Case IPR2016-01127, Paper 130 (February 23, 2018). This post explains the PTAB’s decision that the court will now review on appeal.
Continue Reading Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate. The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress. Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial proceedings at the PTAB. Enactment of this Act would severely diminish the usefulness of AIA proceedings.
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings
On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB.
The main topic of the discussion was guidance on motions for sanctions. The rules relating to trial practice before the PTAB allow the Board to impose an appropriate sanction on any attorney, registered practitioner or party that violates the PTAB’s rules after the offending party has had an opportunity to respond. 35 C.F.R. §42.11(d)(1). The Board has the authority to sanction parties or a party may file a motion for the Board to impose sanctions.
Continue Reading Guidance on Requesting Motions for Sanctions