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 […]
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 […]
Yesterday, the PTO announced a notice of proposed rulemaking to change the claim construction standard used in AIA trial proceedings (IPRs, PGRs, and CBMs). The proposed change is from the “broadest reasonable interpretation” (the standard used during patent examination) to the claim construction standard that is used in federal court. The latter standard is already […]
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 […]
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 […]
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 […]
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 […]
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, […]
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 […]
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 […]