On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”) decisions that held claims 1, 2, 5-9, 12, 13, and 16-22 of Qualcomm’s U.S. Patent No.
PTAB
Party Stipulations during IPR: Incompatible with the Statutory Scheme?
In late December, in Intel Corp. v. Qualcomm Inc., 2020-1828 (Fed. Cir. Dec. 28, 2021), the Federal Circuit found the PTAB erred by accepting Intel’s stipulation concerning the indefiniteness of a means-plus-function claim term. In this opinion, the Federal Circuit explains that in Inter Partes Review (IPR) proceedings, patentability determinations cannot be circumvented due to…
Supreme Court’s Denial of Apple and Mylan’s Petitions Leaves NHK/Fintiv Rule in Place
On January 18, the Supreme Court denied petitions for writs of certiorari from both Apple and Mylan Laboratories. Each company sought to challenge the NHK/Fintiv framework that was developed by the Patent Trial and Appeal Board (“the Board”). As we previously wrote about on this blog in September of last year, the NHK…
The Federal Circuit Finds IPR Petitioner Has Standing
On December 28, 2021, the Federal Circuit issued another decision addressing an appellant’s standing to appeal inter partes review (“IPR”) decisions from the PTAB. The patent community has seen several opinions over the last couple of years as the Federal Circuit continues to navigate the complicated waters of what is and is not sufficient to…
Looking Back at 2021: PTAB Trial and Appeal Statistics
Late last year, the PTAB published its final round of statistics for 2021. From October 1, 2020 to November 30, 2021, 1629 petitions were filed at the Patent Trial and Appeal Board (PTAB). The majority of petitions filed are for Inter Partes Review (IPR), with less than 10% of petitions filed for Post Grant Review…
PTAB Lifts Arthrex Stay Order: What Happens Next at the USPTO?
On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) lifted a stay that he issued on May 1, 2020, pausing all activity in PTAB cases that were remanded to PTAB from the Federal Circuit under Arthrex.[1] Within the order lifting the stay,…
Appealing IPR Decisions – Art. III Standing in the Context of Litigation Settlements and Licenses
The Federal Circuit has provided additional guidance about an appellant’s standing to appeal IPR decisions after settling the related litigations and entering into patent license agreements. In its second decision between the parties on this topic, the court has dismissed the appeal for lack of Article III standing in Apple Inc. v. Qualcomm Inc.,…
Federal Circuit Reaffirms Obviousness Standard by Reversing PTAB in University of Strathclyde v. Clear-Vu Lighting
Earlier this month, in University of Strathclyde v. Clear-Vu Lighting LLC, the Court of Appeals for the Federal Circuit (“the CAFC”) reversed a decision by the Patent Trial and Appeal Board (“the Board”) that found claims 1-4 of the University of Strathclyde’s U.S. Patent No. 9,839,706 (“the ’706 patent”) invalid as obvious. Specifically, the…
Key Trends in PTAB’s 2021 Orange Book and Biologic Patent Study
The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) recently released an updated Orange Book patent/biologic patent study on August 11, 2021. This is the third report providing data on post-grant petitions filed against Orange Book and biologic patents released by the PTAB, and it covers AIA petitions filed between September 16,…
Judge O’Malley Dissents from the Majority on the Enforceability of Arbitration Agreements in IPR Proceedings
Last month, in the case In re: MaxPower Semiconductor, Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) dismissed an appeal by MaxPower Semiconductor, Inc. (“MaxPower”) of four determinations to institute inter partes review (“IPR”) of four of MaxPower’s patents. The majority’s brief opinion states that a decision to institute an IPR…