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
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 Federal Circuit’s Harmonic Inc. v. Avid Tech decision last week is the latest in a string of decisions from the CAFC ruling that it lacks jurisdiction to review various aspects of PTAB institution decisions. In this case, the CAFC ruled that it lacks jurisdiction to review the PTAB’s decision not to institute an IPR … 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
In a recent decision on yet another inter parties review petition brought by billionaire hedge-fund manager Kyle Bass through one of his Coalition for Affordable Drugs entities, the PTAB denied institution of an IPR against Biogen International GmbH (IPR2015-01086 at Paper 18, October 27, 2015). The Board found that the Petitioner failed to establish a … Continue Reading
A pilot program proposed by the U.S. Patent and Trademark Office would have a single Administrative Patent Judge (APJ), as opposed to a panel of three, decide whether to institute trial in a post grant patent proceeding, such as an inter partes review. The full panel would adjudicate the trial if it is instituted. The … Continue Reading
