This week, the Supreme Court granted Oil States Energy Service, LLC’s Petition for Cert, challenging the constitutionality of the IPRs. The primary question presented in Oil States’ petition was whether the IPR “violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” If the Supreme Court were to find IPRs … Continue Reading
The Board’s recent Final Written Decision in Arista Networks, Inc. v. Cisco Systems, Inc., Case IPR2016-00303, confirms that assignor estoppel remains unavailable to patent owners. Assignor estoppel is an equitable remedy that prohibits a patent assignor, or one in privity with an assignor, from later challenging the validity of an assigned patent. See, e.g., Mag … Continue Reading
A “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d). A series of decisions from the Federal Circuit have clarified to what extent institution decisions are reviewable. See St. Jude v. Volcano (CAFC lacks jurisdiction to review decision not to institute … Continue Reading
The Federal Circuit previously clarified that a petitioner’s burden to prove unpatentability never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. On Monday, the Federal Circuit’s In re Magnum Oil Tools International, Ltd. decision clarified that the burden of production likewise never shifts from the patent challenger to the patentee. … Continue Reading
Yesterday, the Federal Circuit issued an opinion clarifying that the introduction of new evidence is not only permitted, but “is to be expected,” in inter partes review proceedings. As long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of new evidence is permissible under … Continue Reading
The Federal Circuit’s Harmonic Inc. v. Avid Tech decision last week is the latest in a string of decisions from the CAFC ruling that it lacks jurisdiction to review various aspects of PTAB institution decisions. In this case, the CAFC ruled that it lacks jurisdiction to review the PTAB’s decision not to institute an IPR … Continue Reading
It is well known that an Inter Partes Review (IPR) may not be instituted if the petitioner was served with a complaint alleging infringement more than 1 year prior to the filing of the petition. 35 U.S.C. § 315(b). Recent Patent Trial and Appeal Board (PTAB) precedent is proof that this seemingly straight-forward rule can … Continue Reading
CUOZZO SPEED TECHNOLOGIES, LLC, PETITIONER v. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE, the Court of Appeals for the Federal Circuit held that (1), in Inter Partes Review (IPR) proceedings, the broadest reasonable interpretation (BRI) standard is appropriate for an issued patent (as opposed to plain … Continue Reading
In a recent decision on yet another inter parties review petition brought by billionaire hedge-fund manager Kyle Bass through one of his Coalition for Affordable Drugs entities, the PTAB denied institution of an IPR against Biogen International GmbH (IPR2015-01086 at Paper 18, October 27, 2015). The Board found that the Petitioner failed to establish a … Continue Reading
On June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (“PATENT”) Act, incorporating two amendments introduced during a mark-up session prior to the vote, as well as a series of changes introduced in a Manager’s Amendment on June 2. The Manager’s Amendment, which was introduced by Sen. Leahy (D-Vt.) and other … Continue Reading
The Patent Trial and Appeal Board (PTAB) recently denied three Petitions for Inter Partes Review filed by VMWare because it acquired AirWatch LLC, which was sued over the subject patents more than one year before VMWare’s petitions. (e.g., IPR2015-00027 Decision.) At the time of filing and service of the suit against AirWatch, VMWare had not … Continue Reading
Yesterday Senators Coons, Durbin, and Hirono introduced the Support Technology and Research for Our Nation’s Growth (“STRONG”) Patents Act of 2015. As Sen. Coons explained in an op-ed, the STRONG Patents Act focuses on ensuring balance in post-grant proceedings at the PTO. To accomplish this, the legislation proposes taking several steps to revise post-grant challenges … Continue Reading
In In re. Cuozzo Speed Technologies, LLC, the Court of Appeals for the Federal Circuit addressed for the first time the standards for Inter Partes Review proceedings resulting from the Leahy Smith America Invents Act (“AIA”).1 This decision will not only have a significant impact on Inter Partes Review proceedings brought before the Patent Trial … Continue Reading
