PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa V. Illumina; CAFC to Review

By | PTABWatch | June 19, 2017
Illustration and Painting Third parties seeking to challenge pre-AIA patents in the USPTO often choose between IPR and ex parte reexamination.  In some cases, petitioners pursue both proceedings, sequentially or in parallel, taking advantage of different timelines to completion, different standards for institution, and using insights gained in one proceeding in the other.  View Full Post
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Will the Supreme Court Kill IPRs?

By | PTAB Musings | June 14, 2017
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 unconstitutional, it would upend the AIA-based reviews (IPR, CBM, and PGR), and likely also ex parte and inter partes reexaminations.  View Full Post
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Supreme Court to Decide Whether IPRs Violate Article III and the Seventh Amendment

By | PTABWatch | June 12, 2017
Front facade of the US Supreme Court building in Washington DC. Words "EQUAL JUSTICE UNDER LAW" are clearly visible right above the columns. Vivid blue sky with clouds is in background. The Supreme Court issued an order on June 12, 2017, indicating it will review the Federal Circuit’s judgment in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, 639 Fed. Appx. 639 (Fed. Cir. 2016) (link).  The petition presented three questions, of which the Court will address only one: Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. View Full Post
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Assignor Estoppel Remains Unavailable As an IPR Defense

By | PTAB Musings | June 6, 2017
The Board’s recent Final Written Decision in Arista Networks, Inc. v. Cisco Systems, Inc., Case IPR2016-00303, confirms that assignor estoppel remains unavailable to patent owners. Assignor estoppel is an equitable remedy that prohibits a patent assignor, or one in privity with an assignor, from later challenging the validity of an assigned patent.  View Full Post
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Different Invalidity Conclusions by PTAB and Federal Courts Prohibited in Inter Partes Reexamination but Permissible in IPR

By | PTABWatch | June 6, 2017
Man under stress because of too much problems. Abstract image with a wooden puppet In Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Appeal 2017-1002 (Fed. Cir. Apr. 21, 2017), the Federal Circuit determined that no inter partes reexamination proceeding can be brought or maintained on issues that a party raised or could have raised in a since-concluded civil action. View Full Post
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The Supreme Court Will Review the Board’s Partial Institution Practice

By | PTAB Musings | May 25, 2017
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 purpose.”  Federal Circuit later denied SAS’s petition for en banc review without opinion.  View Full Post
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Supreme Court Grants Cert in SAS to Decide Required Scope of PTAB Decision

On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, where it has been asked to decide whether the PTAB is statutorily required “to issue a final written decision as to every claim challenged by the petitioner.” The Court’s decision will be important to IPR petitioners and patent owners alike, and could impact the scope of IPR proceedings, the PTAB’s ability to complete them within the statutory time period, and–indirectly–the scope of estoppel that could arise from an IPR proceeding. View Full Post
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