Topic: Estoppel

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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 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 claim-by-claim “partial institution” practice was based on the United States Patent and Trademark Office (USPTO) rule stating that the Board “may authorize the review to proceed on all or some of the challenged claims.” 37 CFR … Continue Reading

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 that are denied institution for purely procedural reasons, such as for redundancy. Case No. 2:13-CV-01015-JRG-RSP (E.D. Tex. May 11, 2017).

After being sued for infringement, the defendant in Biscotti filed several IPR petitions challenging dozens of claims. Some of the grounds were instituted, and the case was stayed pending resolution of the IPR trials, from which several claims survived. … Continue Reading

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