Patent Trial Program Emerges Intact From Supreme Court Row

Authored Brian S. Mudge

In its first decision addressing the post-grant patent trial program recently established by Congress, the Supreme Court in Cuozzo1 has given a resounding victory to the U.S. Patent & Trademark Office. Rejecting a challenge to the PTO’s handling of these new proceedings, the ruling confirms that the Office has broad powers to determine how the cases will be tried and the standards used to govern them. As a result, patent owners will continue to face a difficult path before the PTO in defending challenges to patent validity — one that, to date, has proven to be significantly more hazardous than the courts to patentees.

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IPR Estoppels in District Court: Motion to Strike Smoked by Real-World Product

Authored by Michael S.Turner

As accused infringers rush to challenge patents in trials before the Patent Trial and Appeal Board, they must consider the estoppels of 35 U.S.C. § 315(e). The estoppel statute may prevent petitioners from later raising any ground of unpatentability that was raised, or could have been raised, during the PTAB trial. If claims survive, the accused infringer may be left without prior art patents or printed publications to present in district court, and should consider other types of prior art: prior art use or sale in the United States.

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An Invitation Declined: Supporting a Petition for Inter Partes Review

Since the USPTO first issued its rules regarding inter partes review proceedings, prospective petitioners have grappled with the choices of which grounds of unpatentability to present to the Patent Trial and Appeal Board. Given the estoppel provisions of 35 U.S.C. § 315, which may prevent a petitioner from later raising any ground of unpatentability that either was raised or could have been raised in the IPR proceeding, petitioners taking the IPR plunge are loathe to hold back any grounds of unpatentability that might resonate with the Board, or later to the Federal Circuit on appeal.

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