The Post-Grant Strategist

Under 35 U.S.C. § 311(b), a Petitioner may seek to institute an IPR on grounds that “could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The Federal Circuit (Nos. 2020-1558, 2020-1559) recently decided that admissions regarding the prior art made in the challenged patent, commonly referred to as Applicant Admitted Prior Art (“AAPA”), cannot be “the basis” of an IPR but may have other uses for patent challengers.

Section 315(e)(2) states that once a final decision issues in an IPR challenging a claim, the Petitioner “may not assert either in [court or the ITC] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In California Institute of Technology v. Broadcom Ltd., Nos. 2020-2222, 2021-1527, the Federal Circuit clarified the scope of statutory estoppel, making it harder for some patent challengers to preserve invalidity arguments for litigation.

The Federal Circuit vacated the PTAB’s construction of a claim term, underscoring the principle that proper claim construction may require a close examination of the specification and other available evidence to understand what was purportedly invented and intended to be claimed.

Joinder may allow a party to challenge patent claims with an IPR even if the one-year time bar in Section 315(b) would otherwise preclude the party from filing a petition for IPR. In Uniloc 2017 LLC v. Facebook Inc., Nos. 19-1688, -1689 (Fed. Cir. 2021), the Federal Circuit resolved whether the joining party can continue the challenge even if the original petitioner no longer can due to estoppel.

On appeal of a PTAB decision that all claims in a patent on compressing video files were unpatentable, the Federal Circuit clarified two issues. This post considers the second addressed issue – is the PTAB limited to the arguments made by Petitioners? The Federal Circuit found that it is.

On appeal of a PTAB decision finding all claims in a patent directed to compressing video files unpatentable, the Federal Circuit clarified two issues. This post considers the first clarified issue – what is required for a reference to be considered a printed publication for the purposes of an IPR?

In M&K Holdings v. Samsung Electronics (No. 2020-1160), the patent owner argued that several cited references did not qualify as printed publications, and thus could not be used as the basis for finding unpatentability in an IPR. Although the references were available on an industry group’s website, the patent owner argued the references were not publicly accessible, and thus could not be considered printed publications, because the references were not easily found on the website. Instead of having a single intuitive search page, a user needed to click through various links to get to the references.

The time bar in Section 315(b) says that IPR may not be instituted if the petition was filed more than one year after the petitioner was “served with a complaint alleging infringement of the patent.” A recent PTAB decision illustrates that petitioners should be wary of stepping over that line, even if there is a dispute about the patent owner’s proof of service.

(Co-authored by Elisabeth Hunt)

Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24^th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denial based on parallel infringement litigation in district court or the ITC.

Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questions remain about whether those other means can provide a way to overcome the statutory limits on the appealability of IPR decisions, which we previously discussed. This post, which is the third in a series about judicial review of IPR, addresses a third trap for the unwary: the availability of alternatives to appeal.

Mandamus: Perhaps the most well-known alternative to appeal from and IPR is petitioning for a writ of mandamus. Ever since the Supreme Court’s first decision on IPRs, Cuozzo v. Lee, 136 S. Ct. 2131 (2016), left open the possibility of judicial review of constitutional and statutory rights related to institution, some have speculated that mandamus may be the best route to present those arguments. Indeed, the Supreme Court’s most recent decision on IPRs, Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), declined to foreclose the use of mandamus in “extraordinary cases.”

A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party considering appeal must also determine whether the issue it would want review can even be appealed. This post, which is the second in a series about judicial review of IPR, addresses a second trap for the unwary: the limited scope of permitted appeal.

Section 314(d) prohibits appeal of the PTAB’s decision “whether to institute [IPR] under this section.” Some interpreted that as limiting appeal only of the Institution Decision’s determination under Section 314(a) that the petition’s unpatentability arguments are sufficiently strong to deserve institution. The Supreme Court rejected that interpretation in Cuozzo v. Lee, 136 S. Ct. 2131 (2016), applying the appeal bar to the related determination under a different section that the petition was written with sufficient “particularity.”