When is it too late to petition for IPR?
By: Daniel Kazhdan, Jason M. Garr, John Marlott, and Greg Castanias – On remand from the en banc decision in Wi-Fi One, holding the Federal Circuit can review time bar decisions, the Federal Circuit panel considered whether parties in privity with a patent infringement defendant are time barred from challenging the patent in IPR after one year of the infringement complaint.
Change Is Coming (Maybe): Reviewing the AIA Reviews and 101 “Clarity”
By: Tom Koglman, Rich Graham, and S. Christian Platt – Director Iancu of the USPTO elaborates on his efforts to increase clarity and balance in the U.S. patent system following Mayo, Alice, and the AIA.
Supreme Court Upholds Constitutionality of IPRs
The Supreme Court held that PTAB Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh Amendment of the Constitution.
Supreme Court: No More Partial Institution Practice In AIA Reviews
By: Rich Graham and Greg Castanias – In a win for Jones Day client SAS Institute, a Jones Day team—Greg Castanias, John Marlott, and Dave Cochran—convinced the U.S. Supreme Court that the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in a petition was contrary to the plain language of the America Invents Act. SAS Institute Inc. v. Iancu, No. 16-969, __ U.S. __ (April 24, 2018).
Draft Your Patents Carefully
By: Danial Kazhdan and Vishal Khatri – In this cautionary tale, the Federal Circuit considers a IPR decision invalidating claims of a patent in view of a related PCT application based on the PTAB’s determination that the patent’s priority claim was defective.