Is The PTAB Bound By A Previous Federal Circuit Claim Construction?
By: Dave Maiorana – The Federal Circuit affirms a PTAB determination that the PTAB is not bound by a previous Federal Circuit’s finding regarding claim construction and patentability, where the court’s finding was decided under ITC, not PTAB, standards.
Incorporation by Reference Users Beware
By: Alex Chung and Matt Johnson – The Federal Circuit rescues a patent from PTAB’s determination that an incorporation by reference clause in a patent failed to incorporate material necessary to provide adequate written description support, but a clear and unambiguous incorporation by reference clause would have prevented the issue altogether.
Challenges to Real Parties-in-Interest Continue to Terminate IPR Proceedings
By: Jasper L. Tran and S. Christian Platt – Failure to thoroughly identify a real party-in-interest can undermine an IPR proceeding. The PTAB continues to enforce the requirement that the real parties-in-interest be thoroughly disclosed, this time terminating three IPRs where a petitioner failed to refute challenges to its identified real parties-in-interest.
The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain
By: Tom Ritchie and John Marlott – District courts continue to split on the scope of estoppel as to non-petitioned prior art grounds, and the Federal Circuit has not yet addressed this split . Given the uncertainty, petitioners and patent owners should consider their litigation strategies carefully while awaiting further development.
Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions
By: Tom Koglman and Joe Sauer – The PTAB denied Allergan’s motion to terminate IPR based on tribal sovereign immunity doctrine. In doing so, the Board “recognized differences between the state sovereign immunity and tribal immunity doctrines. In sum, Mylan has eliminated the possibility of relying on tribal immunity to insulate patents from IPR.