Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art.

The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey

The United States Patent and Trademark Office (“USPTO” or the “Office”) recently proposed new AIA trial procedures aimed at boosting the success rate of patent owner motions to amend.[1]  The new procedures, if made effective, would allow patent owners to preview the Board’s analysis of a motion to amend and to then revise their

As discussed in Part I of this article, the scope of IPR estoppel under 35 U.S.C. § 315(e) remains unclear.  In Part II, we explore several approaches that courts may apply.

Specifically, the approaches considered herein contemplate the meaning of the phrase “reasonably could have raised” in the IPR estoppel statute.  Clearly, Congress did not

When the America Invents Act (“AIA”) first went into effect, it was widely believed by practitioners that the scope of the estoppel provisions under 35 U.S.C. § 315(e) was very broad.  Essentially, an IPR petitioner whose petition resulted in a final written determination would be estopped from arguing in district court any §§ 102 and/or

In the recent opinion in Unwired Planet, LLC v. Google Inc., the Federal Circuit has limited the reach of covered business method (CBM) reviews.  The Board had framed its CBM eligibility standard as asking “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial