News & Analysis as of

Inter Partes Review (IPR) Proceeding

STRONGER Patents Act Proposes Substantial Changes to AIA Trial Proceedings

On September 21, 2017, Senator Chris Coons (D-Del.) introduced the STRONGER Patents Act of 2017 in the Senate. STRONGER is an acronym for “Support Technology and Research for Our Nation’s Growth and Economic Resilience.” The...more

Evidence of Unexpected Results Key to Grant of Substitute Claims in Inter Partes Review Proceeding

In Valeo North America, Inc. v. Schaeffler Tech. AG & CO. KG, after finding that all original claims of the patent were unpatentable during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board granted,...more

The Federal Circuit Gives Patent Owners A Fighting Chance: Due Process In IPR Proceedings

by Brinks Gilson & Lione on

The June 15 decision by the Federal Circuit, EmeraChem Holdings, LLC v. Volkswagen Group of Am., Inc., highlights the power of a procedural challenge to a final written decision by the PTAB. Procedural challenges should be...more

Supreme Court’s Ruling on AIA Patent Reviews Could Reverberate Across Patent Law Landscape

Supreme Court’s Ruling on AIA Patent Reviews Could Reverberate Across Patent Law Landscape - Key Takeaways - The impact of the Court’s grant of Oil States’s petition for certiorari, and their subsequent decision on...more

Worldwide Revocation Mechanisms

Please see full Chart on Worldwide Revocation Mechanisms below for more information....more

Be Careful Basing Your IPR On Previously Considered Prior Art

by Jones Day on

It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the...more

Patent Holders Can Evade CBM by Disclaiming CBM Claims

by McDermott Will & Emery on

Addressing petitioner’s urging that the Patent Trial and Appeal Board (PTAB) import the district court “time of filing” rule to institution decisions for covered business method (CBM) reviews, the PTAB once again held that...more

Patent Legislation on the Hill: Senators Introduce the STRONGER Patents Act of 2017

by Ropes & Gray LLP on

Although the America Invents Act was enacted less than six years ago, the appetite for intellectual property legislation in D.C. has continued unabated over the last several years. In addition to the recent Defend Trade...more

Patent Owner Extinguishes IPR by Amending Claims

by McDermott Will & Emery on

In a rare case where the Patent Trial and Appeal Board (PTAB) granted a motion to amend the claims in an inter partes review (IPR), the patent owner successfully canceled all claims subject to review by changing the...more

Without Controlling Interest, Co-Defendants Are Not Real Parties-in-Interest in IPR

by McDermott Will & Emery on

Addressing issues of estoppel and the standard to be considered a real party-in-interest, the Patent Trial and Appeal Board (PTAB) granted institution of a petition for inter partes review (IPR), rejecting the patent owner’s...more

Federal Circuit PTAB Appeal Statistics – June 2017

by Finnegan – AIA Blog on

Through June 1, 2017, the Federal Circuit decided 210 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 155 (73.81%) cases, and reversed or vacated the PTAB on every issue in 22...more

An Early Look at the Impact of Oil States

On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Servs. LLC v. Greene’s Energy Grp., LLC, No. 16-712 (U.S. Jun. 12, 2017). The Supreme Court will review whether the Constitution permits the PTAB, a...more

Supreme Court to Decide the Constitutionality of Inter Partes Review

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more

Intellectual Property Newsletter - June 2017

by Shearman & Sterling LLP on

Shearman & Sterling’s IP litigation team has published its quarterly newsletter. The newsletter covers a wide range of current IP topics: the Supreme Court’s TC Heartland patent-venue decision, the constitutionality of inter...more

Kyle Bass Ends with a Bang: Success in Final PTAB Decision

by Fish & Richardson on

On June 7, 2017, Kyle Bass received his last final written decision in a long list of PTAB decisions rendered over the past two years as Kyle Bass sought to invalidate pharma patents. U.S. Patent No. 8,476,010 (the “’010...more

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

EP Opposition and US Inter Partes Review Decisions Go Hand In Hand

It is often desirable to obtain patent protection for inventions both in Europe and the United States. As a result, competitors frequently look to Europe and the US as important jurisdictions for challenging the validity of a...more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs (2nd Article)

On June 12, the Supreme Court took certiorari on probably the biggest IPR case possible: a case challenging the constitutionality of IPRs on separation-of-powers and seventh amendment grounds. This comes just a few weeks...more

PTAB Denies Timely, Relevant Supplement to Petition

by Jones Day on

By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...more

US: Supreme Court takes up constitutionality of inter partes review

by Hogan Lovells on

On June 12, 2017, the Supreme Court granted certiorari to decide the constitutionality of inter partes review, a proceeding before the Patent Trial and Appeals Board (PTAB) that allows third parties, typically alleged...more

SCOTUS: Supreme Court Takes Up Constitutionality of AIA Reviews

On June 12, 2017, in Oil States Energy Services v. Greene’s Energy Grp., LLC, Case No. 16-712, the Supreme Court accepted certiorari on the question of whether the IPR regime set out by Congress in the AIA is constitutional....more

Supreme Court to Review Whether PTAB Must Address All Issues Raised in IPR Petition

by McDermott Will & Emery on

Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs

It’s no secret that patentees have been generally unhappy with both the process and outcomes of AIA reviews. Now the Supreme Court has agreed to decide whether the entire AIA review system will be eliminated on...more

In Fight Over Recombinant Blood Clotting Factor, PTAB Denies Motion to Submit Supplemental Information

In a case that highlights the importance for petitioners to conduct a thorough prior art search and to anticipate patent owner’s arguments, the PTAB denied a motion to submit supplemental information under 37 C.F.R. §...more

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