Archives: CAFC Appeals

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Will the Supreme Court Kill IPRs?

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

The Supreme Court Will Review the Board’s Partial Institution Practice

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

Federal Circuit Clarifies That It Still Lacks Jurisdiction To Review Whether Petition Was Time-Barred

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

PTAB Institution Decision Does Not Shift Burden from the Patent Challenger to the Patentee

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

If You Amend Claims In A Post Grant Proceeding, Don’t Forget To Supplement Infringement Contentions In Parallel Litigation

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

Fed. Cir. Decision Reiterates The Importance Of Raising All Bases For Invalidity In An IPR Petition

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

The CAFC Reverses And Remands The PTAB’s IPR Decision Canceling All Claims Based On Erroneous Claim Construction

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 Recent CAFC Opinions Closely Scrutinize PTAB IPR Decisions Upholding Claim Validity For Legal Error

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
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