In MaxLinear, Inc. v. CF Crespe LLC, the Federal Circuit recently confirmed that issue preclusion applies to administrative agency decisions, including those from the Patent Trial and Appeal Board (“PTAB”) in IPR proceedings. In MaxLinear, Inc., the Federal Circuit was presented with the appeal of a PTAB decision upholding the patentability of the
PTAB
Federal Circuit Holds That PTAB May Issue Adverse Judgments Prior to an Institution Decision
On January 24, 2018, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”), finding that 37 C.F.R. § 42.73(b) allows the PTAB to enter an adverse judgment prior to an institution decision when the patent owner disclaims all of the challenged claims. In Arthrex, Inc. v. Smith & Nephew, Inc.…
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…
USPTO Trims the Regulatory Fat
On Friday, January 19, 2018, in a Federal Register notice, the USPTO identified four regulations that it is proposing to abolish.[1] The proposals comply with Executive Order 13777, signed by President Trump in February of 2017, which require federal agencies to review all existing regulations and identify those that should be repealed, replaced, or…
Waves of IPRs Against Alacritech-Owned Patents in 2017 May Test PTAB’s Limits Regarding Joinder Practice
Seven new IPRs were filed against patents held by Alacritech Inc. on December 27, 2017. These IPRs (four of which were filed by Dell and three by Cavium) join eight others filed by Intel, Dell, or jointly by Wistron, Wiwynn, and SMS InfoComm since November. Earlier in the year, 24 IPRs were filed against Alacritech-held…
Wi-Fi One, LLC v. Broadcom Corp – Federal Circuit Holds that PTAB Time-Bar Rulings Are Appealable
In Wi-Fi One, the Federal Circuit held en banc that time-bar determinations by the PTAB under § 315(b) are appealable and remanded the associated IPRs for further proceedings pertaining to the time-bar issue.
Appeals from IPR decisions of the PTAB are limited in scope by § 314(d), which states that “the determination by the…
Recent Decision Casts Doubt on the Fate of Tribal Sovereign Immunity at the PTAB
The topic of sovereign immunity was raised a number of times in inter partes review (IPR) proceedings in 2017, and it was cast into the national spotlight when Allergan transferred several patents for its dry-eye drug Restasis® to the St. Regis Mohawk Tribe in an attempt to shield them from PTAB review. But a recent…
PTAB Grants a Rare Rehearing in Cook Medical, LLC v. Boston Scientific Scimed, Inc
As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse…
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…
Supreme Court Oral Argument in Oil States
The Supreme Court recently held oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. Before what appears to be a divided Court, the parties addressed pointed questioning over whether the inter partes review (“IPR”) process is constitutional. The justices’ questions and comments touched on a wide-range of issues including patentee…