Tag Archives: Inter Partes Review

Federal Circuit Rejects Requirement That Patent Owners Have the Burden to Prove the Patentability of Amended Claims Proffered During Inter Partes Review Proceedings

The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading

Illinois District Court Continues Trend Toward Broader Interpretation of IPR-Estoppel

The America Invents Act of 2011, which ushered in a new regime for post-grant patent challenges at the U.S. Patent and Trademark Office (PTO), provides that any patent challenger initiating an inter partes review (IPR) proceeding at the PTO “may not assert” an invalidity ground in a patent case in U.S. district court or in … Continue Reading

Are Inter Partes Reviews “Quintessential” Agency Adjudications?

A superlative or excessive statement is often a dead give-away that the statement may not be true.  In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) … Continue Reading

Why Some State-Funded Institutions May Not Be Subject to Inter Partes Review

On January 25, 2017, the Patent Trial and Appeal Board issued an order dismissing three separate Inter Partes Review (IPR) petitions based on the doctrine of sovereign immunity.  The doctrine of sovereign immunity emanates from the Eleventh Amendment, and acts to immunize states from civil suit.  In Covidien LP v. University of Florida Research Foundation … Continue Reading

Is the Broadest Reasonable Interpretation of Claim Terms, as Applied in Inter Partes Review, Converging on the Standard Applied in Litigation?

This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading
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