This week, the Supreme Court granted Oil States Energy Service, LLC’s Petition for Cert, challenging the constitutionality of the IPRs. The primary question presented in Oil States’ petition was whether the IPR “violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” If the Supreme Court were to find IPRs … Continue Reading
On May 22, the U.S. Supreme Court granted SAS Institute’s Petition for Cert seeking review of the Board’s practice of instituting review of some challenged claims but not others. In the Federal Circuit’s decision on appeal, Judge Newman offered her dissent, opining that “partial review cannot be inferred from the statute or accommodated to its … Continue Reading
A “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d). A series of decisions from the Federal Circuit have clarified to what extent institution decisions are reviewable. See St. Jude v. Volcano (CAFC lacks jurisdiction to review decision not to institute … Continue Reading
The Federal Circuit previously clarified that a petitioner’s burden to prove unpatentability never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. On Monday, the Federal Circuit’s In re Magnum Oil Tools International, Ltd. decision clarified that the burden of production likewise never shifts from the patent challenger to the patentee. … Continue Reading
The Federal Circuit’s recent decision in Target Training International v. Extended Disc North America tells the cautionary tale of what can happen to a plaintiff who successfully navigates a post grant challenge by amending claims but does not promptly amend its infringement contentions in parallel litigation. In this case, Target Training filed an infringement action … Continue Reading
On Tuesday, the Federal Circuit vacated the PTAB’s final rejection of a claim, finding that the rejection was procedurally improper because the PTAB relied on a basis raised for the first time during the oral argument. That decision highlights the importance of petitioners thoroughly developing all potential invalidity bases in the initial petition. Specifically, Dell … Continue Reading
For the third time in November, the CAFC found legal error in a PTAB final written decision—this time based on an erroneous claim construction. In Straight Path v. Sipnet (Fed. Cir. Nov. 25, 2015), the PTAB instituted an IPR for claims 1-7 and 32-42 of a patent directed to establishing real-time communications between computers over … Continue Reading
Two opinions that came down this month illustrate the CAFC’s close scrutiny of potential legal errors in PTAB Final Written Decisions. These decisions underline the benefits of appellants focusing their arguments on legal errors—or even legal ambiguities—in PTAB decisions. Belden v. Berk-Tek (Fed. Cir. Nov. 5, 2015) involved a patent directed to a method for … Continue Reading
For the very first time, the Court of Appeals for the Federal Circuit (CAFC) has reversed a decision by the Patent Trial and Appeal Board (PTAB) in an AIA trial. In inter partes review numbers 2012-00026 and 2013-001091, the PTAB held that only one claim, claim 24, of U.S. Patent 6,757,717 owned by Proxyconn, Inc. … Continue Reading
