PTABWatch Blog

http://www.ptabwatch.com/author/jhartzell/

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.

Recent Blog Posts

  • IPR Estoppel Does Not Apply to ITC Investigative Staff Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While this is an initial determination that has not been adopted by the Commission, this determination creates a huge loophole limiting the effect of estoppel before... More
  • One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed The Federal Circuit recently held that the statutory time bar in 35 U.S.C. § 315(b) precludes the PTAB from deciding an IPR petition filed more than one year after any of the petitioners have been served with a complaint alleging patent infringement, even if that complaint was voluntarily dismissed. Click-To-Call Technologies, LP v. Ingenio, Inc., et al., Case no. 2015-1242, 2018 WL 3893119 (Fed. Cir. Aug 16, 2018). This holding is found in an en banc footnote in a 3-judge... More
  • PTAB Failed to Properly Apply Test for Printed Publication The Federal Circuit vacated and remanded the PTAB’s decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not “printed publications.” Medtronic, Inc. v. Barry, Case no. 17-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018). Recent Board decisions have set a high bar for proving that materials were publicly accessible. We have previously discussed examples here, here, and here. In Medtronic, the Federal Circuit provides... More
  • IPR and Estoppel after SAS Institute The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office issued Guidance on the impact of SAS on AIA Trial Proceedings explaining the procedures it intends to implement in view of the Court’s decision. The... More
  • The Supreme Court Finds IPR Proceedings Constitutional Inter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the United States Supreme Court declared that neither Article III of the Constitution nor the Seventh Amendment right to trial by jury precluded such reviews by... More
  • PTAB Cases You Should Know The Federal Circuit, Supreme Court, and PTAB have been addressing a number of big issues in 2017 and 2018. Here are the cases you should know.   Recent Decisions Appeal of PTAB Institution Decisions After years of decisions applying a hardline rule that the PTAB’s decision whether or not to institute an IPR was not subject to appeal, the Federal Circuit held en banc, that the issue of whether a petitioner is time-barred from filing an IPR petition under 35 U.S.C. § 315(b) –... More
  • PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that... More
  • Two More District Courts Apply IPR Estoppel to Grounds Not Raised In Petition As previously discussed in our post covering the state of IPR estoppel, initial district court decisions have varied regarding the scope of IPR estoppel applied to ground for invalidity not raised in a petition, but that could have been raised. Two recent decisions may show a trend toward uniformity. In Cobalt Boats, LLC v. Sea Ray Boars, Inc., Judge Morgan of the Eastern District of Virginia ruled on motions in limine, including a motion regarding the scope of IPR estoppel. Case... More
  • Look to the Claims for Estoppel In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis. In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings. Affinity Labs of Texas filed... More
  • AIA Estoppel – 7 Things We Know So Far When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up? The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that... More