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
A petitioner in an inter partes review may request to cancel as unpatentable one or more claims only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. This is expressly set forth in the statute, 35 U.S.C. §
On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, No. 16-969, 2017 WL 468440 (U.S. May 22, 2017). The issue in this appeal is whether the America Invents Act permits the Patent Trial and Appeal Board (“the Board”) to partially institute IPR proceedings (as it has been doing).
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 Covidien LP v. University of Florida Research Foundation, Inc., No. IPR2016-01274, Paper No. 21 (P.T.A.B. January 25, 2017), the PTAB held that sovereign immunity prevents would-be petitioners from using IPR’s to challenge the patentability of patents owned by states. Noting that the 11th Amendment confers to the states a broad grant of
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