Inter Partes Review

After their initial shock, lawmakers are fighting back against pharmaceutical company Allergan’s novel plan to protect the validity of its patents by bypassing the Patent Trial and Appeal Board’s (“PTAB”) scrutiny. In September, Allergan transferred the rights to six key patents on the dry-eye drug... read more
Recently, the Patent Trial and Appeal Board (PTAB) designated one inter partes review decision as precedential and three inter partes review decisions as informative.The precedential decision is General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017... read more
In Unwired Planet v. Google, the Federal Circuit vacated a PTAB Covered Business Method (CBM) review decision holding that the PTO’s definition of a “covered business method” was “not in accordance with the law.”Covered Business Method review (CBM) is one of a group of post-issuance administrative... read more
On July 9, 2016, the U.S. Patent Office will cease using the Patent Review Processing System (PRPS) for electronic filings in post-grant reviews, inter partes reviews, and covered business method patents reviews. A new system called the Patent Trial and Appeal Board End to End system (“PTAB E2E”)... read more
In its June 20, 2016, decision in Cuozzo Speed Technologies v. Lee, the U.S. Supreme Court confirmed the USPTO’s authority to decide to use the broadest reasonable construction for claim terms of a patent in an inter partes review (IPR) and denied Cuozzo’s attempt to appeal the IPR institution... read more
Now that inter partes review (IPR) has been around for a few years, more and more IPR decisions are making their way to the Court of Appeals for the Federal Circuit (the “Fed Cir”). It’s interesting to see how the Fed Cir is defining the procedural bounds for the USPTO Patent Trial and Appeal Board... read more
In an opinion by Judge Chen in Nike, Inc. v. Adidas AG 14-1542 (Feb. 11, 2016), the Court of Appeals for the Federal Circuit (“Federal Circuit”) vacated the USPTO Patent Trial and Appeal Board’s (“the Board”) decision to deny Nike’s motion to add four substitute claims to U.S. Patent No. 7,347,011... read more
The Leahy-Smith America Invents Act (AIA) created post-grant proceedings at the USPTO to provide members of the public an efficient way to challenge the validity of issued patents without the expense of federal court litigation. The USPTO Patent Trial and Appeal Board (PTAB) has adopted a claim-by-... read more
In a recent decision, the Northern District of California decided that a patent owner’s submissions in an inter partes review constituted a prosecution disclaimer for claim construction purposes. Based in part on prosecution estoppel, the court found on summary judgement that the defendant did not... read more
On January 15, 2016, the Supreme Court granted the petition for cert for Cuozzo Speed Technologies, LLC v. Lee. This case is based on an inter partes review (IPR) instituted by the USPTO Patent Trial and Appeal Board (“the Board”). The Board applied the “broadest reasonable interpretation” in... read more
In a recent decision denying a petitioner’s request for rehearing on a decision not to institute an inter partes review proceeding, the USPTO Patent Trial and Appeal Board (“the Board”) re-emphasized that “procedural defects” can kill a petition. Specifically, the petitioner’s “failure to comply... read more
The Federal Circuit issued a precedential opinion today in MCM Portfolio v. Hewlett-Packard Co. (Fed. Cir. 2015) (“MCM” and “HP” respectively), holding that the Inter Partes Review (“IPR”) system does not violate Article III or the Seventh Amendment of the U.S. Constitution.MCM is the owner of... read more
Recently, the Patent Trial and Appeal Board (PTAB) added the following order and decisions to its list of Representative Orders, Decisions, and Notices regarding patent post grant proceedings:- A representative order regarding motions to amend patent claims in an Inter Partes Review. The order... read more