Author: Sangeeta Shah

Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings

Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings In a closely-watched case, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO’s Patent Trial and Appeal Board and held that tribal sovereign immunity does not apply to inter partes review proceedings under the America Invents Act. The court reasoned that IPR proceedings are essentially an agency review of its decision to grant the challenged patent, […]

PTAB Issues Guidance on Claim Amendments Caused by Aqua Products Decision

In a November 21, 2017 memorandum, David P. Ruschke, the PTAB’s Chief Administrative Patent Judge, issued new guidance affecting pending and future motions to amend claims in inter partes review proceedings. The guidance memorandum reflects changes to the PTAB’s procedures in light of the Federal Circuit’s decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). The new guidance lessens the burden on patent owners seeking to amend claims in […]

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 4, 2016)(granting petition for rehearing en banc). One unresolved issue in AIA post grant proceedings is the circumstances that allow a party to appeal the PTAB’s decision to institute […]

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness.  In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged claims were unpatentable as obvious when the Board failed to articulate a reasoned explanation for combining two prior art references. In re Nuvasive, Inc., No. 2015-1670 (Fed. Cir. Dec. 7, 2016). This decision provides patent owners with relief from tenuous conclusory arguments that […]