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 […]
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 […]
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 […]
In In re: NuVasive, Inc., the Federal Circuit vacated and remanded the Board’s final written decision in IPR2013-0508 for further proceedings. At issue was the Board’s reliance on a prior art figure that was first raised in petitioner’s reply and which the Board did not permit the patent owner to address in the preceding. In […]
In Husky Injection Molding Sys. v. Athena Automation Ltd., a split panel of the Federal Circuit dismissed a patent owner’s appeal of the PTAB’s final written decision in an IPR where patent owner asserted that institution should have been denied based on assignor estoppel. The majority’s opinion cites the Supreme Court’s Cuozzo decision as setting up […]
In WiFi v Broadcom, the Federal Circuit confirmed that the Supreme Court decision in Cuozzo did not overrule the prohibition on appellate review of decisions relating to institution of IPR proceedings. Although Cuozzo left open the possibility that certain “shenanigans” (e.g., notice failures that create due process problems) might be reviewable, the Federal Circuit rejected […]
On August 12, 2016, the Federal Circuit granted the petition for rehearing filed in In re Aqua Products Inc. and decided that its full panel of judges will consider the PTAB’s current practice for allowing (or, in most cases, not allowing) claim amendments. Amendments in PTAB proceedings are currently guided by the Informative Opinion issued in Idle Free Systems, Inc. v. Bergstrom, […]
The “PRPS” e-filing and case management system for post-grant proceedings was retired this past weekend. The new system, PTAB End to End (PTAB E2E), provides significant improvements over the former PRPS system. The new and improved features of PTAB E2E include: Additional search filters, including the ability to search proceedings by party name, type of […]
Earlier today, the Supreme Court issued its decision in Cuozzo. The decision preserves the status quo for PTAB trials by (1) confirming that decisions to institute trial by the PTAB are not reviewable and (2) finding that the PTAB reasonably acted within its rulemaking authority in construing claims under the broadest reasonable interpretation (BRI) standard. Institution Decision Not Reviewable: […]