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.
It’s Obvious: POSA Could Write Software To Generate Conference Call Requests
An April 2018 PTAB decision that considers a petitioner’s arguments that the knowledge and skill that accompany the education and experience of one of skill in the art can support a finding of obviousness.
Prior Art Chemical Structures Must Be More Than A “Code Name”
By Cary Miller, Ph.D. – A recent PTAB decision considers post-filing evidence that a prior art chemical known to the public by its code name demonstrated a claimed chemical structure was inherently taught by the prior art.