Klarquist News & Insights

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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PTAB

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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PTAB / District Court / Estoppel

Patent Owner sinks infringement theory with statements made in IPR

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, […]

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PTAB / Sovereign Immunity

Sovereign immunity requires dismissal of University of Minnesota, but IPR proceeding will continue as to co-owner Toyota

Several Board decisions have issued this year finding public universities exempt from IPR proceedings because of the sovereign immunity clause of the 11th Amendment to the U.S. Constitution. See, e.g., Covidien v. University of Florida Research Foundation. In a recent decision, another university was dismissed from a pending IPR. This time, however, the IPR proceeding will […]

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PTAB / Federal Circuit / PTAB Procedures and Rules

Failure to challenge “new” arguments during an IPR proceeding may waive APA procedural objections on appeal

In Securus Techs. v. Global Tel*Link Corp., the Federal Circuit rejected a patent owner’s argument that the PTAB improperly considered new arguments raised in the petitioner’s reply brief, in part because the patent owner did not object during the IPR proceeding. In Securus, the Federal Circuit reviewed a pair of final written decisions involving U.S. Patent […]

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PTAB

Uncertainty is the only certainty when it comes to IPR estoppel

Someday, maybe soon, the Federal Circuit will weigh in on the scope of IPR estoppel for references that were known by a party but not presented in an IPR petition filed by that party. Until that happens, it appears that the manner in which IPR estoppel is applied will continue to vary. Even in the […]

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