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…
Tag Archive for ipr
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.
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.
ITC Again Recommends Exclusion Based on a Patent Likely to be Found Invalid
by Josh Landau •
International Trade Commission (ITC) Administrative Law Judge McNamara issued a Notice of Issuance of Initial Determination today, explaining that, based on a complaint from Qualcomm, she had found that Apple infringed claim 1 (but not claim 8) of U.S. Pat. No. 8,063,674, and that the claim was valid. Based on that, she stated that she…