On Monday, the PTAB made clear that the ultimate outcome of the Fintiv rule championed by Director Iancu is the elimination of inter partes review (IPR) as a viable alternative to challenging patents in litigation. RAI sued Philip Morris on April 9th, 2020. Less than a month later, on May 8th, 2020, Philip Morris filed…
Tag Archive for ipr
Cert Granted in Arthrex Case On PTAB Appointments
by Josh Landau •
This week, the Supreme Court granted certiorari in a set of related cases between Arthrex and Smith & Nephew, as well as the federal government. The cases revolve around one fundamental question: are judges of the Patent Trial and Appeal Board (PTAB) principal officers of the United States? That question controls the constitutionality of their…
Comments Emphasize Flaws In PTO Proposal To Remove Pre-Institution Presumption
by Josh Landau •
Recently, the Patent and Trademark Office (PTO) proposed a concerning new rule. It would create serious due process problems, violate the Administrative Procedure Act (APA) by changing an agency position without justification, increase the cost of inter partes review (IPR), and make it harder to invalidate bad patents in IPR. Given all these problems, it…
Federal Circuit Holds That PTAB Should Consider § 101 When Reviewing Proposed Amended Claims
by Josh Landau •
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…
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…
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.”
A Follow-up on CyWee and ZTE v. LG and the Public
by Josh Landau •
A few weeks ago, I covered a PTAB case that illustrates why the PTO’s proposed rule on who bears the burden on amended claims in IPRs is fatally flawed. In that case, ZTE challenged a CyWee patent and LG joined the ZTE petition. But CyWee filed an amended claim that ZTE wasn’t concerned by. ZTE…
CyWee, ZTE, and the PTAB v. the Public Interest
by Josh Landau •
In an order issued this week in IPR2019-00143, a panel of PTAB judges decided that the public has no interest in ensuring that only valid patent claims issue from the Patent Office. That’s not an exaggeration—if anything, it understates the case. In fact, the PTAB order states that “the public is generally likely to benefit…
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.