No PTAB Do Over: After SAS Remand, PTAB Denies All Grounds
By Jihong Lou, Christian Platt, and Tom Ritchie Last April, in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that after instituting an inter partes review, the PTAB must decide the patentability of all of the claims the petitioner has...
E-Trading Patents Are “For Technological Inventions,” Not Subject To CBM Review
By Jihong Lou and Christian Platt In a nonprecedential per curiam decision, the Federal Circuit vacated the PTAB’s final written decisions in five covered business method (“CBM”) reviews on four related e-trading patents as “arbitrary and capricious” because those...
Update: Does § 315(e)(2) Say What It Means and Mean What It Says?
By Emily Tait - When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid on any ground...
All or Nothing: Why the Supreme Court SAS Mandate Does not Eliminate the Shaw Safe Harbor
By Lisa Furby, David Anderson, Mike Lavine, and Matt Johnson Last week the Chicago-Kent Journal of Intellectual Property published a comment prepared by a team of Jones Day attorneys that analyzed whether the PTAB is treating multiple petitions filed against a common...
IPR Appeal Dismissed After Biosimilar Development Discontinued
By Jihong Lou, Ph.D. and Cary Miller, Ph.D. Article III of the Constitution imposes a “case or controversy” limitation on the jurisdiction of federal courts: an actual case or controversy must exist between the parties at all stages of the federal court proceedings,...