Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review
By Jihong Lou and Matt Johnson In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section 315(b). In...
Supreme Court To Decide Appealability of PTAB’s Time-Bar Determinations
Gregory A Castanias and Jihong Lou On June 24, in Dex Media, Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S.), the Supreme Court agreed to review the question whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review...
Federal Agencies Not Eligible To Challenge Patents In PTAB Trials
Gregory A. Castanias and Jihong Lou On June 10, in a 6-3 decision in Return Mail, Inc. v. United States Postal Service, the Supreme Court ruled that a federal agency is not a “person” eligible to request post-issuance review of a patent under the Leahy-Smith America...
Court Blocks Stay Request Absent Agreement to Estoppel for Third-Party IPRs
By Jen Bachorik and Matt Johnson The United States District Court for the Central District of California recently denied Defendant Adobe Systems Inc.’s motion to stay litigation pending resolution of parallel inter partes review (“IPR”) proceedings before the PTAB...
Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings
By Greg Castanias, Dave Cochran, Jennifer Swize, and Jihong Lou The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its 6–3...