On January 24, 2019, the PTAB denied institution of inter partes review (“IPR”) in Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310 (PTAB Jan. 24, 2019) (Paper 7). The PTAB exercised its discretion to deny institution despite finding that Deeper demonstrated a reasonable likelihood of success in prevailing as to two of the twenty-three claims
Supreme Court
Implications of PTAB’s Transition to the Phillips standard for Claim Construction
The PTAB will soon implement a change in its claim construction standard in post-issuance reviews, moving from the broadest reasonable interpretation (“BRI”) standard to the standard articulated in the Federal Circuit’s opinion, Phillips v. AWH Corp.[1] We previously covered this on our blog here. The effects of the change may be significant in…
PGS v. Iancu – The Post-SAS Landscape Develops
The Supreme Court held in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), that the Patent Trial and Appeal Board’s (“PTAB” or “the Board”) practice of so-called partial institutions was contrary to the statute. The Supreme Court explained that once an inter partes review (“IPR”) is instituted, the PTAB must decide on…
Updating PTAB Strategies post-SAS Institute
Following the SAS Institute decision by the Supreme Court (which we covered in a separate post on the PTAB Law blog), the U.S. Patent and Trademark Office (“PTO”) must now address every challenged claim in a trial if a trial is instituted as to any one claim. The PTO has further decided that it will…
The Future of IPRs – The US Supreme Court’s Decisions in Oil States and SAS
Yesterday, the U.S. Supreme Court issued two important decisions relating to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO).
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, U.S., No. 16-712, 4/24/2018
In Oil States, the Supreme Court ruled…
How Creative is One of Ordinary Skill – DSS Tech. Mgmt. v. Apple Inc.
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity…
The Preclusive Effect of Related PTAB Decisions
In MaxLinear, Inc. v. CF Crespe LLC, the Federal Circuit recently confirmed that issue preclusion applies to administrative agency decisions, including those from the Patent Trial and Appeal Board (“PTAB”) in IPR proceedings. In MaxLinear, Inc., the Federal Circuit was presented with the appeal of a PTAB decision upholding the patentability of the…
Supreme Court Oral Argument in Oil States
The Supreme Court recently held oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. Before what appears to be a divided Court, the parties addressed pointed questioning over whether the inter partes review (“IPR”) process is constitutional. The justices’ questions and comments touched on a wide-range of issues including patentee…
The Potential Impact of the Supreme Court’s Decision in Oil States
On November 27, 2017, in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court will hold oral argument to determine the constitutionality of the inter partes review (“IPR”) process implemented by the America Invents Act. Clearly, this case has the potential to drastically alter the patent litigation landscape if IPR…
Private Right or Public Right – Whether a Patent is One or the Other Can Spell the End for IPRs
On Monday, June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No. 16-712, to answer the question whether the PTAB could properly examine the validity of a patent in an inter partes review.
Oil States first filed an infringement suit against Green’s Energy Group…