Supreme Court Excuses Administrative Exhaustion for Some Structural Constitutional Claims
By Greg Castanias and Matt Johnson - In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution's Appointments Clause to an Administrative Law Judge's ("ALJ") decision, even if the party did not raise the issue...
In Your Dreams – Additional PTAB Discovery Remains Elusive
By Dave Maiorana and Bobby Karl - Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of discovery:...
PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims
By Andrea Beathard and Matt Johnson - Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in Pfizer,...
Use It Or Lose It – Second Appeal Appointments Clause Challenge Deemed Forfeited
By Alison Ibendahl and Albert Liou - An April 13, 2021 decision by the Federal Circuit denied a motion to vacate and remand PTAB decisions based on the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Newman, Inc., et al., 941 F.3d 1320 (Fed. Cir....
Two’s a Crowd: Prior Art in Design Patent Claim Construction
By John Evans and Hannah Mehrle - On April 15, 2021, the PTAB issued a Final Written Decision in the LKQ Corp. case finding a design patent claiming a vehicle fender panel unpatentable as obvious. IPR2020-00064, Paper No. 39 (Apr. 15, 2021). The obviousness analysis...