In today’s Uniloc v. Hulu decision, the Federal Circuit held that the PTAB is permitted to consider all issues of patentability, including § 101 (and presumably including § 112), when a patent owner proposes new claims in an inter partes review (IPR). While a petitioner can only file an IPR petition based on § 102…
Tag Archive for inter partes review
New Federal Circuit Appeal Claims PTAB Unconstitutional Because Of Fee Funding—But Ignores The Patent Examination Process
by Josh Landau •
In a recently filed brief in the Federal Circuit case New Vision Gaming v. SG Gaming, the appellant argues that the PTAB is unconstitutional because the fees charged for the proceeding create a bias towards institution. Specifically, New Vision Gaming claims that PTAB judges stand to benefit from institution and therefore it’s a violation of…
New Report Confirms IPR Has Had Significant Positive Impacts On U.S. Industry
by Josh Landau •
A recent report, prepared by economists at the Perryman Group, confirms what has long been stated to be the case—inter partes review (IPR) has positively impacted the U.S. economy. In 2017, on the five-year anniversary of IPR, I calculated an estimate of the legal savings that IPR had generated from 2012 to 2017. I estimated…
Meet the Western District of Texas—NPEs Certainly Have
by Josh Landau •
For years, the Eastern District of Texas was the favored stomping ground for patent trolls. Short times from filing to trial, shorter trials, judges with local rules friendly to patent plaintiffs, and a jury pool that tended to be friendly to plaintiffs all contributed to this. It probably didn’t hurt that Eastern District judges were…
Thryv, the PTAB, and the APA
by Josh Landau •
April’s Thryv decision by the Supreme Court clarified the nonappealability of institution decisions in inter partes review (IPR). But by placing an absolute bar on appeal of institution decisions, Thryv effectively insulated the PTO’s choice of institution rules from appeal. That’s not a good situation, and it’s one which the Director should actively seek to…
In Thryv, Supreme Court Clarifies Bar On Review of Institution Decisions
by Josh Landau •
In today’s decision in Thryv v. Click-To-Call, the Supreme Court held that the AIA means what it says—decisions to institute an inter partes review “shall be final and nonappealable.”
Polaris Concurrence Explains Why Arthrex Was Wrong, But Signals Federal Circuit Won’t Fix It
by Josh Landau •
Today’s Federal Circuit decision in Polaris v. Kingston had an unsurprising outcome—in line with last year’s Arthrex decision, the PTAB’s determination was remanded back to the PTO for review in line with Arthrex. But while the decision was brief, the concurrence—authored by Judge Hughes and joined by Judge Wallach—was not. It explains, in detail, just…
Patent Links and Articles to Read by the Fire
by Josh Landau •
With the holiday season upon us, there’s nothing better than to curl up by the fire with a hot cup of tea and a stack of patent-related articles. Here’s a few you might want to take a look at.
Nartron IPRs a Touchstone For Understanding PTAB Discretion
by Josh Landau •
The PTAB’s recent institution decisions in petitions filed against US5,796,183, a touchscreen patent owned by Nartron, are useful in understanding how the PTAB can be expected to address other situations with multiple simultaneous petitions, especially when a later petitioner may be able to benefit from a decision on an earlier petition.
STRONGER Patents—Bad Legislation
by Josh Landau •
Yesterday, the STRONGER Patents Act of 2019 was introduced by Senators Chris Coons and Tom Cotton, along with a House companion bill introduced by Reps. Steve Stivers and Bill Foster. The bill looks much like the last two times it was introduced [1][2], but there have been a few changes.