PGRs Still Rare – Is Estoppel The Reason?
By John Marlott - A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why. The America Invents Act (“AIA”) created new procedures for challenging the...
Final Written Decision Not Enough For Assertion Of Amended Claims
By Sarah Geers - Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b). The patentee needs more than a Final Written Decision (“FWD”)...
One Party, One Voice
By Alex Li and Matt Johnson - An inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) is a proceeding of the petitioner versus the patent owner. In a situation where the petitioner or the patent owner consists of multiple entities, there may be a...
Thin Fintiv Factor Four Stipulation Sufficient For Institution
By Zach Sharb and Matt Johnson - On April 30, 2021, the PTAB instituted IPR trials based on petitions by Facebook, Inc. (“Petitioner”) challenging certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”) and...
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...