Are Inter-Partes-Review Proceedings Constitutional? Supreme Court Will Weigh In
By Greg Castanias, Sasha Mayergoyz, and Stuart Yothers Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review. In Oil States Energy Services v. Greene’s Energy Group, No. 16-712, the Court agreed to decide this question: ...
District Court deference to PTAB regarding priority claim? Not necessarily.
By Jaime Choi and Dave Cochran In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks. However, because the PTAB’s decision was not being challenged in the District...
Federal Circuit Upholds Claim Construction – No Due Process Violations
By Stephanie Brooker and Carl Kukkonen On May 8, 2017, in Intellectual Ventures II LLC v. Ericsson Inc., 15-1739, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) claim constructions in a non-precedential decision. ...
Eleventh Amendment Revisited – Board Again Finds Sovereign Immunity Applies to PTAB
By Josh Sallmen and Joe Sauer Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed an IPR...
Supreme Court Grants Certiorari in SAS Institute to Review Board’s Partial Decision Practice
By Greg Castanias On Monday, May 22, the United States Supreme Court agreed to review the Federal Circuit’s decision in SAS Institute Inc. v. Lee, No. 16-969. The petition for certiorari, which was filed by Jones Day lawyers Greg Castanias, John Marlott, and Dave...