Recent Blog Posts

  • PTAB Redundant Ground Practice Complicating Estoppel 315(e)(2) Estoppel Application Less Than Straightforward  IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).... More
  • Chevron Deference for AIA Trial Matters Trumped? Key Administrative Law Doctrine on the Congressional Chopping Block & Onerous Rule Hurdles  As pointed out in yesterday's Top 5 PTAB Trial Developments of 2016, the Administrative Procedure Act (APA) is the constitution of Article I courts. In its 70 years of existence, the APA has never been modified. Yet, over time, common law developments have been intermingled with APA considerations — none more prominent than the "Chevron Doctrine." Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).... More
  • Top 5 PTAB Trial Developments of 2016 2016: The Administrative Procedures Act (APA) Takes Center Stage  In re Cuozzo Speed Technologies was certainly a watershed moment for AIA trial practices. The 2016 decision settled years of seemingly endless debate on the propriety of the Patent Trial & Appeal Board's (PTAB) claim construction rubric. By endorsing the Board's use of the Broadest Reasonable Interpretation (BRI), the high court squelched a key rallying cry of PTAB critics and simultaneously reinforced the legitimacy of AIA trial proceedings. Yet, while the Cuozzo challenge to BRI... More
  • What to Do With 112 Issues in IPR? Moving Forward on Indefinite Claims Could Haunt Petitioners  Often times when preparing an Inter Partes Review (IPR) petition, a claim is encountered that may be of an indeterminate scope under 35 U.S.C. 112. As indefiniteness issues are not considered in IPR, the question then becomes: Should the broadest of the possible competing construction for the claim term be proposed in order to get an IPR instituted on the claim? Or, should the petitioner avoid proposing a construction for an indefinite term... More
  • CAFC Grants En Banc Review of IPR Appeal Bar Bar to Appealing 315(b) Disputes Likely to be Overruled  Back in November, the Federal Circuit issued a non-precedential decision in the Click-To-Call Techs. v. Oracle Corp., which openly questioned the continued viability of Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) post-Cuozzo.  As a reminder, Achates held that issues arising under 35 U.S.C. § 315(b) (i.e,, IPR one year, time bar) could not be appealed to the CAFC, pursuant to 314(d).     Today, in Wi-Fi One LLC v. Broadcom (here), the Court... More