Archives: IPR Proceedings

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Will the Supreme Court Kill IPRs?

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

Assignor Estoppel Remains Unavailable as an IPR Defense

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

Federal Circuit Clarifies That It Still Lacks Jurisdiction To Review Whether Petition Was Time-Barred

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

PTAB Institution Decision Does Not Shift Burden from the Patent Challenger to the Patentee

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

The CAFC Rules That It Lacks Jurisdiction To Review PTAB’s Denial Of Institution On “Redundant” Grounds

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

PTAB Decision Highlights The Importance Of Petitioners Filing Within 1 Year Of The Earliest Possible Date Of Service

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

The Supreme Court Will Review Inter Partes Review Standards

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

PTAB Says: Abuse of Process and Improper Use Discovery is Moot in Denial of IPR Petition

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

Senate Judiciary Committee Approves Significant Revisions to Claim Construction Standards in Inter-Partes Review and Post-Grant Review

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

STRONG Patents Act of 2015

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

Federal Circuit Preserves Broadest Reasonable Interpretation Standard in IPR Proceedings

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