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Category: IPR


Precedential Opinion Panel Decides Issue Joinder in IPR is Permissible
March 14, 2019
Post by Patricia A. Sweeney - Of Counsel
A panel of the Patent Trial and Appeal Board (PTAB) issued a precedential decision March 13, 2019 stating that a party that challenges a patent in an inter-partes review (IPR) proceeding can join their own petition challenging another’s patent, in order to add new issues, but only in limited circumstances. Here, Proppant Express Investments LLC started an IPR proceeding to challenge a patent of Oren Te.......
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PTAB Makes Broadest Interpretation on Estoppel in IPRs
November 12, 2018
Post by Oliver P. Couture, Ph.D.
Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file a second IPR based on different groun.......
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An IPR Appellant Must Establish an Injury to Have Standing
August 10, 2018
Post by Blog Staff
In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the revie.......
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AUTM’s Recommends Narrow Changes to NIST on the ROI Initiative
July 27, 2018
Post by Oliver P. Couture, Ph.D.
The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly contributed to the comm.......
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PTAB to Consider When Conference Materials are Prior Art
June 11, 2018
Post by Blog Staff
In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that certain other references .......
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Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court
April 24, 2018
Post by Jonathan L. Kennedy
The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigni.......
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Patentability and Patent Protection: Is the Pendulum Starting to Swing Back?
March 23, 2018
Post by Oliver P. Couture, Ph.D.
The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to 12th place out of 50 economies in recent years. T.......
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Constitutionality of Inter Partes Reviews: A Look at Supreme Court Oral Arguments in Oil States
December 06, 2017
Post by Blog Staff
The enactment of the AIA in 2011, inter partes review (IPR), has been available as a method to challenge the validity of a patent in the US Patent and Trademark Office. A total of 6139 IPR petitions (92% of all petitions) have been filed with the Patent Trial and Appeals Board (PTAB) since that time. One of those challenges occurred when Green’s Energy Group, in response to litigation, went to the PTAB t.......
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Existing IPR Procedure Will Likely Stay the Same
June 23, 2016
Post by Blog Staff
, Ph.D. The Federal Circuit yesterday, in a ten-to-one decision, rejected Ethicon's petition for en banc rehearing on the question of whether the USPTO Director improperly delegated decision-making authority for the institution of inter partes review (IPR) to a PTAB panel. This decision confirms another existing USPTO practice, the function of PTAB panels to both institute and hold a trial to mak.......
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Supreme Court Upholds Broadest Reasonable Interpretation and No Review for Institution in PTAB Proceedings
June 20, 2016
Post by Blog Staff
. The Supreme Court has issued its opinion in the case of In re Cuozzo Speed Technologies, LLC. In re Cuozzo initially began as an inter partes review (IPR) with the Patent Trial and Appeals Board (PTAB) where Garmin challenged the validity of Cuozzo's patent relating to an interface that uses GPS technology to display a vehicle's speed as well as the speed limit on the basis that Cuozzo's patent was.......
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Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale
May 25, 2016
Post by Jonathan L. Kennedy
In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two appara.......
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USPTO Issues Rule Amendments for Trials Before PTAB
April 07, 2016
Post by Blog Staff
The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, 2015, which pertain to inter partes review (IPR), covered business .......
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PTAB's Interpretation of 35 USC 315(b) Continues to Stand: Dismissal Without Prejudice Effectively Nullifies the One Year Bar to Bring an IPR
March 30, 2016
Post by Jonathan L. Kennedy
The USPTO's Patent Trial and Appeal Board's holding that the voluntary dismissal of a lawsuit, without prejudice, effectively nullifies the service of the complaint for purposes of triggering the one year bar in 35 U.S.C. § 315(b) to petition for the institution of an inter partes review (IPR) stands in Shaw Indus. Grp. v. Automated Creel Sys. after the Federal Circuit maintains that it does not have juri.......
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Federal Circuit Clarifies Rules for IPR Supplemental Information Submission
January 07, 2016
Post by Blog Staff
The Am The America Invents Act (AIA) created a number of new pseudo-litigation proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  While the proceedings, including inter-partes review (IPR), have been in place since September 16, 2012, the specific rules and procedures, as well as the underlying authority, continue to be resolved.  .......
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Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application
September 10, 2015
Post by Blog Staff
Paul S. Mazzola Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can constitute a prior .......
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The Continuing Saga of the First IPR at the Federal Circuit
July 09, 2015
Post by Blog Staff
    The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review ("IPR‚¬) . The order issued by the .......
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Alternative Patent Reform Legislation Proposed in Senate
March 06, 2015
Post by Blog Staff
Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years. The most visible legislative efforts have involved the "Innovation Act" proposed by Senator Goodlatte in 2013, and again in 2015. The version of the Innovation Act introduced in 2013 stalled out in the Senate, but has been re-introduced in the H.......
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Oral Arguments Held in Appeal of First IPR
November 18, 2014
Post by Jonathan L. Kennedy
By Jonathan Kennedy On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO. As noted in our previouspost, the appeal presents a number of interesting procedural and substantive issues. While the oral argument did not address all of the issues on appeal, the arguments from.......
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Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review
October 14, 2014
Post by Jonathan L. Kennedy
The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. v. Cuozzo Speed Technologies, LLC (IPR2012-0000.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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