On Monday, June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No. 16-712, to answer the question whether the PTAB could properly examine the validity of a patent in an inter partes review.
Oil States first filed an infringement suit against Green’s Energy Group…
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…
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…
In REG Synthetic Fuels (“REG”), the PTAB found anticipated all challenged claims 1-5 and 8 of U.S. Patent 8,231,804. These claims covered even-carbon-number paraffins and methods of making them. Claims 1, 3, 4, and 8 were found anticipated based on a U.S. patent to Craig, and claims 1-3, 5, and 8 were found anticipated based…
In Click-To-Call, two Federal Circuit judges called for en banc review of the Achates and Wi-Fi One decisions holding that 35 U.S.C. § 314(d)[i] precludes appellate review of a Board’s IPR determination underlying institution that the petitioner could overcome the one-year time bar under 35 U.S.C. § 315(b).[ii]
Concluding that it is…
In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., Olympus Medical Systems Corp., IPR2014-00233 (Fed. Cir. Nov. 15, 2016) (Judges Moore, Schall, and O’Malley), the Federal Circuit vacated and remanded the Board’s decision invalidating certain claims of U.S. Patent 6,030,384 (“’384 patent”). The Board’s decision was based on prior art under pre-AIA §102(a). This…
In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit considered the impact of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) on the scope of appellate review of a PTAB decision to vacate an inter partes review institution decision and terminate the proceeding and concluded there…
In Husky Injection Molding v. Athena Automation, the Federal Circuit has again refused to review a decision underlying the Board’s institution decision, in this case, whether the Petitioner was barred from filing an inter partes review petition based on assignor estoppel. As in Achates, the court concludes that it lacks jurisdiction to conduct…
An increasing number of cases demonstrate the challenges that the Federal Circuit and parties face when dealing with standing questions in appeals from administrative agencies. These challenges only emphasize the growing need for a change in the Court’s rules of procedure.
Standing in cases from the U.S. Patent and Trademark Office (“PTO”) has become a…
The recent decision in Wi-Fi One v. Broadcom, has presented an interesting opportunity for the Federal Circuit to reconsider its jurisprudence on the reviewability of the PTO’s institution decision post-Cuozzo and in particular the application of the time bar set forth in 35 U.S.C. § 315(b). The language of 35 U.S.C. § 315(b)…
