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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

Patent litigation often involves the intersection of practice before the PTAB and district courts.  Not surprisingly then, the subject of this post—the Federal Circuit’s recent opinion concerning the reexamination of U.S. Patent No. 6,284,471 (“the ʼ471 patent”)—directly relates to a litigation analyzed on our firm’s companion blog, BiosimilarsIP.com.  See here and here.

In re

The Federal Circuit’s May 8, 2017 opinion in Intellectual Ventures II LLC v. Ericsson, Inc., while non-precedential, provides useful insight into bounds of procedural due process requirements in an IPR proceeding.  Due process necessitates “notice and an opportunity to be heard.”  Further, because IPRs are a formal administrative adjudication under the Administrative Procedure Act

Dickinson v. Zurko, 527 U.S. 150 (1999) requires the Federal Circuit to review the USPTO’s fact-findings under an Administrative Procedures Act (“APA”) standard rather than for clear error, the standard it previously applied to such fact-findings.  Id. at 154-65.  The Federal Circuit later determined that the correct APA standard was the “substantial evidence”

On Monday, June 27, the Supreme Court granted Click-to-Call’s petition for writ of certiorari, vacated the Federal Circuit’s judgment below, and remanded the case “for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___ (2016).”  Click-to-Call Technologies, LP v. Oracle, Corp., No. 15-1014.  This so-called “GVR” order