SCOTUS to Decide 2: Are AIA Patent Reviews Constitutional?

Authored by Brian S. Mudge and Clifford A. Ulrich

For the second time in less than a month, the U.S. Supreme Court on June 12, 2017 granted certiorari in a case involving inter partes review. In Oil States v. Greene’s Energy Group, the Court has agreed to decide whether administrative patent trials, launched in 2012 by the America Invents Act, are Constitutional.[1] The case will decide if the AIA patent review program, which has resulted in over 1,500 final decisions declaring some or all challenged claims unpatentable, remains viable, or whether validity challenges must be heard by the district courts. A ruling that AIA patent trials are unconstitutional would result in substantial change to the current patent litigation landscape and strategy.

Click here to continue reading...

SCOTUS to Decide: Is PTAB Required to Determine Patentability of All Claims Challenged in an IPR Petition?

Authored by Brian S. Mudge and Clifford A. Ulrich

On May 22, 2017, the United States Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, agreeing to decide whether the PTAB is required to issue a final written decision with respect to patentability of all claims challenged in a petition for inter partes review (IPR) or whether it may issue a final written decision with respect to only some of the claims challenged in the petition. The case may significantly affect how the PTAB handles IPR proceedings.

Click here to continue reading...

PTAB Nixes Reliance on Technical Report: Not Publication

Authored by Brian Mudge

We have previously written about disputes regarding whether a prior art reference qualifies as a publication in AIA trials.[1] In a recent decision, the Board ruled that a prior art reference did not qualify as a publication under §102(a). The case, Activision Blizzard v Acceleration Bay,[2] rejected petitioner’s attempt to rely on a 1999 technical report allegedly published by University of California / San Diego (“UCSD”).

Key Takeaway:  This case demonstrates that the PTAB will adhere to demanding requirements for petitioners to establish that a reference qualifies as a prior art publication. Petitioners should be prepared to provide detailed evidence showing a prior art reference was publicly accessible before the priority date of a challenged patent. Meanwhile, patent owners should take advantage of opportunities to challenge the public accessibility of references, particularly where the evidence and arguments in a petition are conclusory; such challenges can be effective in a preliminary response and may derail a case before trial is instituted.

Click here to continue reading...

Federal Circuit Lets CBM-Narrowing Decision Stand

Authored by Brian S. Mudge

The Federal Circuit has denied a request for rehearing en banc of a case, decided last fall, that narrowed the types of patents that may qualify as a Covered Business Method. The case, Unwired Planet v Google,[1] involves the standard to be applied for determining whether a patent is eligible for CBM review.

Key Takeaway.  The Federal Circuit’s November 2016 panel decision in the case – which rejected that portion of the Board’s CBM standard covering matter “incidental” or “complementary” to a financial activity – remains in place. As a result, the PTAB will most likely be applying a narrower definition for “covered business method,” as it has done since the panel decision issued. Parties should be aware of greater scrutiny and narrower scope of patents eligible for CBM review, and that Patent Owners have more opportunity to challenge allegations that a patent meets the statutory definition for CBM patents.

Click here to continue reading...

PTAB, District Courts Diverge on Scope of Estoppel

Authored by Brian S. Mudge

We have previously written about how the Federal Circuit and the PTAB are applying the AIA estoppel provisions.[1] Since the Federal Circuit’s Shaw ruling, several recent opinions have construed the scope of estoppel. Two of these cases, from district courts, cases have applied estoppel narrowly. But a recent PTAB decision, issued in the wake of these decisions, shows that the Board is not following the lead of the district courts, but instead is continuing to apply its broad approach to estoppel. It will likely be left to the Federal Circuit to resolve the difference, although the Court of Appeals recently declined an invitation to take on the issue.

Click here to continue reading...