Yesterday, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, rejecting the Patent Office’s practice of instituting IPR proceedings for some, but not all, claims challenged in a petition. In a 5-4 decision, the Supreme Court held that when the Patent Office institutes an IPR, it must decide the patentability of all […]
Today, the Federal Circuit affirmed a Board decision of adverse judgment against a Patent Owner based on the pre-institution disclaimer of challenged claims. In IPR2016-00917, Arthrex (Patent Owner) filed a preliminary response requesting denial of the petition based on the disclaimer of all challenged claims and specifically stating that it was not requesting adverse judgment. In […]
An IPR petition that results in a final written decision finding all challenged claims unpatentable is unquestionably a success. But that’s not the only measure of success for IPR proceedings. In IPR2017-00588 (Nokia v. Huawei), T-Mobile, a real-party-in-interest to the IPR, appears to have found success long before the final written decision. On September 9, 2017, […]
In a December 19, 2016 decision, Judge Robinson (D. Del.) held that, under current Federal Circuit law, IPR estoppel can only apply to references on which the PTAB institutes trial. Judge Robinson’s decision was in response to plaintiff Intellectual Ventures’ motion for summary judgment that defendant Toshiba is estopped from raising invalidity grounds that it did […]