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
All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims
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
“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments
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
EDTX judge rules that IPR estoppel applies to all grounds included in the petition, except those that are denied for purely procedural reasons
In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Roy S. Payne of the Eastern District of Texas recommended finding that the IPR estoppel statute, 35 U.S.C. § 315(e), applies to all grounds included in an IPR petition except those
District Court holds that IPR estoppel does not apply to grounds denied institution on the merits
In Verinata Health, Inc. v. Ariosa Diagnostics, Inc., Judge Susan Illston of the Northern District of California held that the IPR estoppel statute, 35 U.S.C. § 315(e), does not apply to invalidity grounds asserted in an IPR petition but
PTAB Usually Misses the One-Month Pendency Goal for Requests for Rehearing
No statute or rule establishes a time limit for the Board to decide a request for rehearing. However, the Trial Practice Guide states that the Board “envisions” that decisions will be made within approximately one month unless additional briefing is
Federal Circuit holds that grounds denied institution as redundant are not subject to estoppel
In its recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that estoppel does not apply to grounds denied institution on the basis of redundancy. No. 2015-1116 (Fed. Cir. Mar. 23, 2016)
Federal Circuit approves PTAB practice of addressing patentability of only instituted claims in final written decisions
In Synopsys, Inc. v. Mentor Graphics Corp., a split Federal Circuit panel held that final written decisions in IPR proceedings need not address all claims challenged in the petition. Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016).
In
A Prima Facie Case Is Not Required for Institution
In Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, the PTAB held that the “reasonable likelihood” standard for institution of trial does not require that the Petitioner establish a prima facie case of unpatentability. IPR2015-00737, Paper 16
PTAB considers a copyright notice to be evidence of publication
In LG Electronics, Inc. v. Advanced Micro Devices, Inc., the PTAB held that a copyright notice in a cited reference was evidence of publication as of the copyright date. The PTAB also held that a date without a copyright