alert: Inter Partes Review

USPTO Proposes New Procedures to Expand Availability of Claim Amendments During AIA Post Grant Proceedings

On October 29, 2018, the USPTO published a request for comments on proposed procedures designed to make it easier for patent owners to amend claims in challenged patents during inter partes review proceedings (IPR) and other AIA post grant trials. The Office stated that, “The goal of the proposed amendment process . . .  is to provide an improved amendment practice in AIA trials in a manner that is fair and balanced for all parties and stakeholders.” […]

Federal Circuit Tackles Post-SAS Procedural Tangles – Rules That Patent Owner May Request Remand, Did Not Waive Challenge to Partial Final Written Decision

Polaris Industries, Inc. v. Arctic Cat, Inc., No. 2017-1870 (Fed. Cir. May 30, 2018)(nonprecedential). In the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 584 U.S. __, 138 S.Ct. 1348 (2018), ruling that 35 U.S.C. § 318(a) requires the PTAB’s final written decision (“FWD”) in an inter partes review proceeding to address every claim challenged by the petitioner, the PTAB and the Federal Circuit have faced a series of procedural issues arising in […]

Supreme Court Upholds Constitutionality of IPR Proceedings, But Strikes Down PTAB Partial Final Written Decisions

The U. S. Supreme Court issued rulings today in two cases involving inter partes review proceedings (“IPRs”) created by the Leahy-Smith America Invents Act (“AIA”). In the first case, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 (U.S. Apr. 24, 2018), the Court ruled in a 7-2 decision that the IPR process does not violate Article III of the U.S. Constitution nor the Seventh Amendment, because it is a permissible exercise […]

PTAB Designates Two New Informative Decisions Addressing Its Discretion to Deny Review under 35 U.S.C. § 325(d) Based on Prior Examination

The PTAB recently designated two decisions as informative that concern its discretion to deny institution of an IPR/CBM petition. Under 35 U.S.C. § 325(d), “In determining whether to institute or order a proceeding . . . the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” The PTAB periodically designates decisions as “informative” for several reasons, including that they […]

New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously

The USPTO Patent Trial and Appeal Board recently designated three decisions as “informative” under the Board’s procedures. Informative decisions are not binding authority, but contain examples of PTAB norms on recurring issues, provide guidance on issues of first impression, or provide guidance on PTAB rules and practices. See PTAB Standard Operating Procedure No. 2 (Rev. 9, Sept. 22, 2014). The three decisions designated as informative illustrate the Board’s practices in declining to grant petitions to […]

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to amend claims during Inter Partes Review (IPR) proceedings under the America Invents Act. In a set of five separate opinions spanning over 140 pages, the appeals court rejected the current PTAB requirement that the patent owner bears […]

PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings

General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) A familiar strategy in inter partes (“IPR”) review proceedings under the America Invents Act (“AIA”) is for petitioners to file multiple petitions challenging claims in an issued patent, including “follow-on” petitions filed after the initial petition for review. By using multiple petitions, a challenger may present unpatentability arguments and advance prior art that could not be adequately framed effectively in a […]

Supreme Court Agrees to Review Challenge to Constitutionality of AIA Inter Partes Review Proceedings

In a somewhat surprising decision, the U.S. Supreme Court granted certiorari on June 12, 2017 to hear a challenge to the legality of inter partes review (IPR) proceedings implemented by the Leahy-Smith America Invents Act in 2012. The Court will hear argument on whether the IPR process violates a patent owner’s constitutional rights to have property rights adjudicated by an Article III federal court and to a jury trial. Oil States Energy Services, LLC v. […]

Statements Made in IPR Preliminary Responses May Trigger Later Prosecution Disclaimer

Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017) In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create prosecution disclaimer during subsequent federal court litigation. The court ruled that IPR proceedings are administrative in nature, and the same policies that support disclaimer based […]

Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes

In Cuozzo Speed Techs., LLC v. Lee,[i] the U.S. Supreme Court rejected the patent owner’s challenge to the U.S. Patent and Trademark Office’s implementation of the Leahy-Smith America Invents Act’s new post grant proceedings. The Court held that Cuozzo could not challenge the Patent Trial and Appeal Board’s decision to institute inter partes review and that the USPTO reasonably exercised its rulemaking authority in requiring the PTAB to construe claims under review using the USPTO’s […]

USPTO Issues Scaled-Down Revised Rules For PTAB Trials

On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at a tactical disadvantage. The new rules make some notable changes to some PTAB trial procedures, but not to other procedures criticized by some AIA trial […]

Federal Circuit Okays PTAB Practice Of Reviewing Fewer Than All Challenged Claims In IPR

In a recent decision, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) acted properly in issuing a final decision as to some – but not all – claims challenged in an inter partes review proceeding under the America Invents Act. Synopsys, Inc. v. Mentor Graphics Corp., No. 2014-1516 (Fed. Cir. Feb. 10, 2016). As a […]

Federal Circuit Judges Voice Concern Over PTAB Practice Of Denying AIA Petitions Based On “Redundancy”

In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition, but contends that its decisions effectively are not subject to judicial review. Two Federal Circuit judges expressed concern that the practice may be unconstitutional and […]

PTAB Panel Allows Joinder Of Multiple IPR Proceedings Filed By Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(C)

An expanded panel of the USPTO Patent Trial and Appeal Board (“PTAB” or “Board”) recently exercised its discretion under 35 U.S.C. § 315(c) to grant a motion to join an inter partes review proceeding with an already-initiated proceeding filed by the same petitioner. This latest decision underscores the divide among PTAB panels concerning the procedural maneuver of joining serial IPR petitions. Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., Case No. IPR2015-00762 (PTAB Oct. […]

USPTO Proposes New Rules For PTAB Trial Proceedings

On August 19, 2015, the U.S. Patent and Trademark Office released a package of proposed procedural revisions affecting post-grant proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB). The proposal responds to public comments submitted during 2014, and is in addition to the “quick fix” changes to the PTAB trial procedures announced by USPTO Director Michelle K. Lee on March 27, 2015. The Leahy-Smith America Invents Act (AIA) created new administrative proceedings permitting members […]