Klarquist News & Insights


One-year time bar does not apply to suits filed by parties that do not own the patent

Last year, the Federal Circuit decided two cases that held that a dismissed complaint will not toll the Section 315(b) one-year bar. In particular, neither a voluntary dismissal (Click-to-Call Techs., LP v. Ingenio, Inc.) nor an involuntary dismissal (Bennett Regulator Guards v. Atlanta Gas Light) will toll the application of the one-year time bar because the “statute endorses no […]

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PTAB / Federal Circuit / PTAB Procedures and Rules / Statutory Bars

A dismissal of a complaint does not toll the one-year time bar triggered by service

In what situations will the dismissal of a complaint not start the clock on the one-year time bar for IPRs? As long as the complaint was served, the Federal Circuit’s answer–based on two recent cases–may be “none.” In August, the Federal Circuit decided Click-to-Call Techs., LP v. Ingenio, Inc., which held that a voluntary dismissal without […]

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PTAB / Board Discretion

Joining an earlier IPR proceeding may impact your ability to file another IPR

In IPR2018-00347, the Board exercised its discretion and denied institution of Honda’s petition against U.S. Patent No. 7,154,200, assigned to Intellectual Ventures. The Board applied the seven, non-exhaustive factors set out in General Plastics (IPR2016-01357; PTAB May 4, 2016) and was ultimately “swayed” by the 1st and 3rd factors, finding that Honda “chose to file two […]

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PTAB / Estoppel / PTAB Procedures and Rules / Supreme Court

Supreme Court rejects PTAB “partial institution” practice in IPR proceedings

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 […]

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PTAB / Claim Amendments / Claim Construction / Federal Circuit

PTAB’s alternative claim construction saves the day

Alternative claim constructions are often presented in IPR proceedings. Addressing alternative constructions in the final written decision may help the PTAB avoid reversals on appeal. That was the case in Arendi v. Google, where the Federal Circuit rejected the PTAB’s primary claim construction but affirmed based on an alternative claim construction discussed in the decision. In […]

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PTAB / Estoppel / Federal Circuit / PTAB Procedures and Rules

Federal Circuit affirms Board’s grant of adverse judgment based on pre-institution disclaimer

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 […]

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Patent Owners Now Can Appeal Time-Bar Decisions (No Shenanigans Required)

On January 8, 2018, the en banc Federal Circuit in Wi-Fi One v. Broadcom (Wi-Fi II), reversed its September 2016 panel decision in Wi-Fi I, opening the door for appellate review of Section 315(b) time-bar decisions in IPR proceedings. Previously, patent owners had no recourse if they were dissatisfied with the PTAB’s application of the Section […]

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