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The Federal Circuit’s May 8, 2017 opinion in Intellectual Ventures II LLC v. Ericsson, Inc., while non-precedential, provides useful insight into bounds of procedural due process requirements in an IPR proceeding.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…

On Thursday of last week, the Federal Circuit sitting en banc heard oral arguments in Wi-Fi One, LLC v. Broadcom Corporation. At its core, this rehearing focuses on the relatively narrow issue of whether USPTO determinations regarding the timeliness requirements of 35 USC § 315(b) are eligible for judicial review. However, based on the…

A failure to provide an adequate explanation for findings of obviousness is becoming the Federal Circuit’s recurring rationale for vacating decisions by the Patent Trial and Appeal Board. In recent months, the Federal Circuit has consistently overturned decisions by the Patent Trial and Appeal Board based on the Board’s lack of an adequate reason or…

In a rare reversal of a Board IPR decision, the Federal Circuit in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-1900 (March 14, 2017) (Judges Lourie, Moore, and Taranto), distinguished between an anticipatory reference that explicitly discloses multiple possible combinations and a reference that fails to disclose all claim elements…

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…

A new § 101 decision provides a little more insight into subject-matter eligibility. In Apple, Inv. v. Ameranth, Inc., Case Nos. 2015-1703, and -1704, the Federal Circuit reviewed decisions in CBM2014-00013, -00015, and -00016 (decision dated November 29, 2016). The CBMs involved subject matter eligibility challenges against the claims of U.S. Patent Nos. 6,384,850;…

In In re Nuvasive, Inc. (Fed. Cir. Nov. 9, 2016) (Judges Moore, Wallach, and Taranto), the Federal Circuit considered two Board decisions with respect to U.S. Patent No. 8,187,334 (“the ’334 patent”).  The Federal Circuit affirmed the Board’s final written decision in IPR2013-507 (“IPR507”), which invalidated all but one challenged claim, and vacated the Board’s…