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
Daniel R. McCallum
The Strict Limits of 3 U.S.C. § 121’s Safe Harbor Provision (And the Intersection of Two Blogs)q
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…
Leave No Stone Unturned – Microsoft Corp. v. Parallel Networks
The Federal Circuit, as an appellate court, defers to the findings of the Patent and Trial Appeal Board (the “Board”). But that deference only goes so far. The Federal Circuit’s December 1, 2017, non-precedential opinion in Microsoft Corporation v. Parallel Networks Licensing, LLC, is another example of the Federal Circuit requiring the Board to…
Cascades Projection v. Epson – Questioning the Constitutionality of IPRs
On May 11, 2017, the Federal Circuit denied a request for an initial hearing en banc in Cascades Projection LLC v. Epson Am., Inc., Nos. 2017-1517, 2017-1518 (Fed. Cir. May 11, 2017). Although the denial was not surprising, the level of interest from the Court was. With multiple amicus briefs, two dissenting opinions, and…
The Bounds of Procedural Due Process – Intellectual Ventures II LLC v. Ericsson, Inc.
The Federal Circuit’s May 8, 2017 opinion in Intellectual Ventures II LLC v. Ericsson, Inc., while non-precedential, provides useful insight into bounds of procedural due process requirements in an IPR proceeding.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…
PTAB Reminded of Its Obligations Under the Administrative Procedures 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”…
Limits on Use of “Common Sense” – Arendi S.A.R.L. v. Apple Inc., et al.,
The Federal Circuit’s precedential opinion in Arendi S.A.R.L. v. Apple Inc., et al., Case No. 2015-2016 (Aug. 10, 2016) is instructive on the limits of “common sense” in an obviousness analysis. The opinion is also an example of what appears to be a growing trend of the Federal Circuit reminding the Board that it must…
Click-To-Call–Still Ringing (For Now)–But Will We Get An Answer On Judicial Review Of PTAB Institution Decisions
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…