In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials. In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) … Continue reading
The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute … Continue reading
The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all … Continue reading
The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 U.S. ___, No. 16-969 (2018). Thus, the Board’s final written decisions in IPRs must address the patentability of all challenged claims. The Board’s … Continue reading
In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v Greenes Energy Group, LLC, 584 U.S. ___, No. 16-712 (2018). In a 7-2 decision authored … Continue reading
In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d). That statute provides that the board may reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.” … Continue reading
In In re NuVasive, Inc., the Federal Circuit clarified what constitutes adequate notice to a Patent Owner of “pertinent portions” of a prior art reference relied upon in an IPR petition. Case No. 2015-1672 (Fed. Cir. Nov. 9, 2016). On appeal to the Federal Circuit after the Board cancelled all but one of the challenged … Continue reading
In Perfect Surgical v. Olympus America, Inc., the Federal Circuit found harmful error in the PTAB’s diligence framework and conclusions, thereby potentially lowering the bar required to establish diligence in PTAB cases. Case No. 2015-2043 (Fed. Cir. Nov. 15, 2016). In the underlying IPR, the Board found a patent owner did not prove the inventor continuously … Continue reading
In Intellectual Ventures II LLC v. Ericsson Inc.,[1] the Federal Circuit considered whether the PTAB’s adoption of a new claim construction in its Final Written Decision constitutes a violation of the parties’ due process. Intellectual Ventures argued that it was denied due process because the construction set forth in the Board’s Final Written Decision was … Continue reading