inter partes review

IPR Is Here to Stay, With Even Greater Stakes

April 25, 2018

On April 24, the Supreme Court issued two important decisions on the availability and scope of post-grant Inter Partes Review (IPR) by the U.S. Patent and Trademark Office. The IPR process allows the PTO to review and potentially cancel claims of a previously-granted patent based on prior art.

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Court determined that the IPR process is constitutional. In earlier proceedings, a patent’s claims had been revoked in an IPR proceeding. The patentee challenged the IPR process as violating Article III or the Seventh Amendment right to a jury trial by transferring an adjudication of private property rights to an administrative tribunal. The Court held that IPR violates neither provision, analogizing the grant of a patent to a government-granted right to build bridges or railways that can be revisited in an administrative proceeding.

In SAS Institute Inc. v. Iancu, the Court interpreted Section 318 of the Patent Act to determine that, if an IPR is to be instituted, it has to be instituted to decide the patentability of all of the claims challenged in the IPR petition. In the PTO proceedings, the IPR was only instituted on a subset of the claims that were originally challenged in the opening IPR petition. The Court held that a PTO regulation authorizing partial institution was inconsistent with the plain meaning of the statutory text.

The decision in SAS Institute is an important change in IPR practice. Previously, the PTO was frequently picking-and-choosing claims and theories from the initial petition on which to proceed to a full administrative trial. But the PTO still has substantial discretion in instituting or denying the proceedings on the whole, subject to review under the Administrative Procedures Act. Thus, while crafting the initial petition (as a petitioner) or attacking it (as a patent owner) was always important, this new requirement that the challenged claims are addressed in an all-or-nothing decision makes the preliminary, pre-institution stages of an IPR even more critical.


March 2017 Patent Prosecution Update

March 17, 2017

The March 2017 patent prosecution lunch featured a discussion of a recent change to the deadline for requesting examination for a patent application in the United Kingdom (UK). In addition, a recent Federal Circuit case, Phigenix, Inc. v. ImmunoGen, in which the Federal Circuit held that a petitioner lacked standing to an appeal an adverse final decision in an Inter Partes Review (IPR) was covered. A summary of a recent case concerning obviousness (In re van Os), which requires an examiner to provide a rationale behind a conclusion that a particular combination would have been “intuitive” in an obviousness rejection, was provided. The presentation may be downloaded here.


February 2017 Patent Prosecution Update

February 16, 2017

The February 2017 patent prosecution lunch featured a discussion of issues related to the United States Patent and Trademark Office’s (USPTO) Web-Based Issue Fee From (Web 85b). In addition, a recent case concerning university sovereign immunity to Inter Partes Review (IPR) proceedings was discussed (Covidien LP v. University of Florida Research Foundation Inc.). The latest USPTO patentable subject matter guidelines for business methods were also discussed. The presentation may be downloaded here.


January 2016 Prosecution Lunch

February 3, 2016

The January 2016 patent prosecution lunch featured a discussion of the recent December and January outages at the US Patent and Trademark Office (USPTO) PAIR and EFS systems. In addition there was discussion regarding the Cuozzo Speed Technologies, LLC v. Lee case in which the United States Supreme Court is reviewing inter partes review (IPR) proceedings as to claim interpretation standards and statutory authority to review institution of proceedings. There was also discussion regarding a recent Massachusetts Supreme Court case concerning subject matter conflicts. In addition the web-based Application Data Sheets (ADS) now available on the USPTO website were discussed. The presentation can be downloaded here.


August 2015 Litigation Update

August 21, 2015

The August litigation update included a discussion of some important statistics on post grant proceedings issued by the Patent Trial and Appeal Board (PTAB). The statistics offer information on the number of Inter Partes Review (IPR), Covered Business Method Review (CBMR), and Post Grant Review (PGR) proceedings that have been initiated and granted, the most common subject matter involved, and the number of claims held invalid in the end. The update also included a discussion of the Akami v. Limelight case that has been moving between the Federal Circuit and the Supreme Court. The Supreme Court ruled in Akami that showing inducement to infringe requires a single direct infringer. In response, the Federal Circuit has now expanded the definition of a “direct” infringer to include multiple parties working together in a joint enterprise.

The presentation can be downloaded here.


Will the America Invents Act (AIA) Change Patent Litigation in the Eastern District of Texas?

December 15, 2011

Below is a presentation examining whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas. Click here to download a copy.