Author: Erin Bowles

Supreme Court to Review PTAB Practice of Reviewing Only Selected Challenged Claims

SAS Institute Inc. v. Lee, No. 16-969 (U.S. May 22, 2017). On May 22, 2017, the U.S. Supreme Court granted review in the first patent case accepted for the October 2017 term. The Court granted certiorari to review whether the Patent Trial and Appeal Board’s practice of determining the patentability of some, but not all, claims challenged in a petition for inter partes review violates the America Invents Act. In this case, ComplementSoft, LLC sued […]

PTAB Institution Rate Continues To Lag Behind 2014 Rate, Highlighting Need For Expert Reports to Adequately Support Petition

Data released by the USPTO Patent Trial and Appeal Board (PTAB) for the Fiscal Year 2016 reveals that the PTAB is granting petitions to review at a rate similar to FY 2015, and significantly below the higher rate in FY 2014. Thus far in FY 2016, the Board has denied instituting trial on about 33% of all IPR petitions. This is consistent with the denial rate in 2015 (34.7%) and illustrates a dramatic increase in […]

PTAB Decision Vacated and Remanded for Changing Claim Construction “Midstream”

Even though the Federal Circuit agreed with the Patent Trial and Appeal Board’s new claim construction in the final written decision, the Court found that the Board errored by adopting a new construction for a term it had construed differently in its institution decision. (see SAS Institute, Inc. v. ComplementSoft, LLC (Fed. Cir. June 10, 2016). The Federal Circuit vacated and remanded the portions of the Board’s final written decision that relied on the new […]

PTAB Remains Consistent from Institution to Final Decision in First Group of IPRs Decided Together

On February 10, 2014, the Patent Trial and Appeal Board (PTAB) issued a group of four final written decisions to inter partes review (IPR) trial proceedings involving Intellectual Ventures Management, LLC (“IVM”) and Xilinx, Inc. (“Xilinx”).  IVM filed four IPR petitions challenging the patentability of claims in four patents owned by Xilinx.  The four final written decisions were entered just prior to the one year anniversary of the institution date, as required by statute. The […]