The Patent Trial and Appeal Board issued 67 IPR and CBM Final Written Decisions in March, including decisions following remands from the Federal Circuit, cancelling 760 (83.33%) instituted claims while declining to cancel 121 (13.27%) instituted claims. Patent owners conceded
Now that IPRs have been upheld as constitutional, is it business as usual at the PTAB?
In many ways, yes. There is a 25-day window for seeking rehearing of the Court’s decision.1 Until that window closes without a rehearing request,
While the Supreme Court upheld IPRs under Article III and the Seventh Amendment, did the Court leave open the possibility for other constitutional challenges?
Yes, it expressly left open several future challenges. The first is the retroactive application of inter
How will other constitutional concerns affect IPRs?
Oil States addressed constitutionality under Article III and the Seventh Amendment, but it did not directly address the other takings and due process issues raised by the Justices. Those issues will need to
Will Oil States affect other types of PTAB trials, like Covered Business Method Reviews (CBM) and Post-Grant Reviews (PGR)?
There are some differences between IPRs, CBMs, and PGRs, but they are all decided by the same administrative body—the PTAB within
Will Oil States have any effects on other administrative agencies?
By holding that non-Article III venues may resolve patentability issues, the Court’s holding may support the International Trade Commission’s (ITC) ability to also resolve patentability issues—a power it has exercised
Are there any changes you foresee based on Oil States?
We believe there will be an uptick in IPR filings in the near term. A petitioner must file its IPR petition within one year of being served with an infringement
Through March 15, 2018, the Federal Circuit decided 329 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 248 (75.38%) cases, and reversed or vacated the PTAB on every issue in 36 (10.94%)
The Patent Trial and Appeal Board issued 54 IPR and CBM Final Written Decisions in February, including decisions following remands from the Federal Circuit, cancelling 420 (63.44%) instituted claims while declining to cancel 209 (31.57%) instituted claims. Patent owners conceded
On March 21, 2018, the PTAB instituted its first derivation proceeding under 37 C.F.R. § 42.400 et seq., having denied many petitions over the years. Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 (Paper 32). The claims were directed to
