For the first time, the Federal Circuit held that statements made by a patent owner during an IPR can narrow the scope of the claims in district court. The court stated that this “will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused […]
Under 35 U.S.C. § 325(d), the Patent Trial and Appeal Board has the discretion to deny a follow-on inter partes review petition where multiple petitions are filed against the same patent. In exercising its discretion, the Board may consider whether “the same or substantially the same prior art or arguments previously were presented to the […]
Nearly four years after the AIA became effective, the estoppel provisions of 35 U.S.C. § 325 are only now being explored by the Courts in any detail. Thus far, they may be less onerous than originally speculated (or feared), but still uncertain in several respects. The statute estops “any ground that the petitioner raised or could have raised.” Decisions appear to have taken the “could have raised” out of the statute. The Federal Circuit has held that grounds that were raised but not instituted in an IPR are not subject to estoppel, but has not ruled on whether grounds that were not presented in the IPR petition have no estoppel effect or whether references used in a combination for a ground instituted are not estopped for use in a different combination. Two district courts have held that references known, but not included in an IPR petition, are not estopped; the correctness of this interpretation of the Federal Circuit’s decisions is being challenged in a recent petition for a writ of mandamus. Particularly if the scope of estoppel remains narrow, these decisions may reduce the availability of district court stays, since far fewer validity issues are less likely to be resolved in an IPR.
Last week, the Patent Trial and Appeal Board (“PTAB”) dismissed three related inter partes review (“IPR”) petitions (IPR2016-001274, 75, 76) on the basis of sovereign immunity. The University of Florida Research Foundation Incorporated (“UFRF”) filed suit in Florida state court, alleging a breach of contract against Covidien LP, the Petitioner. Covidien responded with a counterclaim […]
Whether a patent qualifies for a CBM review has been a moving target. Early decisions held that the claims do not need to be directed to a “financial product or service,” since a reference in the specification to a financial use may be sufficient. More recently, there have been CBM decisions requiring that a specification […]
On Wednesday, September 7, the Patent Trial and Appeal Board found that U.S. Patent Nos. 7,670,358 and 7,776,072 were not obvious, in part because certain cited prior art was not “disseminated or otherwise made available to…persons interested and ordinarily skilled in the art exercising reasonable diligence.” Medtronic, Inc. v. Mark A. Barry, IPR2015-00780, -00783. The […]
Our post-grant proceedings attorneys combine the technical and procedural skills of our renowned patent prosecution and litigation practices. Click below to view members of our Post-Grant Team.
Our goal is to keep our clients up to date on the latest practice tips. Since its enactment in 2011, the American Invents Act and its implications have changed for practitioners and set up new challenges. Click below for our latest post-grant proceedings practice tips and resources.