As previously discussed, we recently led the first successful defense against an IPR on the basis of sovereign immunity. Already, two other state universities are seeking dismissal of IPRs on that same basis: NeoChord v. University of Maryland (IPR2016-00208) and Reactive Surfaces v. Toyota (IPR2016-01914 & IPR2017-00572). As patent owners consider whether to assert the sovereign immunity defense to IPR, they should keep in mind several key lessons we found useful.
Topics: Sovereign immunity
Wolf Greenfield recently opened a new frontier for public entities with patents challenged in IPR by securing dismissal of two IPRs on the basis of sovereign immunity. The decision, which is the first to apply sovereign immunity as a defense to IPR, is particularly significant to public universities with many patents—and those who would challenge those patents in IPR. Though questions remain unanswered, the decision is disrupting the practice of IPRs.
Topics: Sovereign immunity
The Federal Circuit recently confirmed that challengers using IPR outside the typical context of ongoing litigation face a trap for the unwary: those that are not careful to lay the proper groundwork may not be able to appeal an adverse decision by the Board.
Covered business method (CBM) review is a popular alternative to IPR, but is available only for patents related to financial activities. In Unwired Planet, LLC v. Google Inc., No. 2015-1812 (Fed. Cir. Nov. 21, 2016), the Federal Circuit held that the Board has been too generous in its definition of which patents can be subject to CBM review—allowing some only because they could be used in a way that relates to financial activities.
Last week, the U.S. Supreme Court heard oral arguments in Cuozzo Speed Technologies v. Lee. At issue in this appeal is the fundamental nature of IPR—is it an efficient means to cull bad patents that shouldn’t have been issued in the first place, or is it a cost-effective substitute for district court litigation? While we’ll have to wait until June for the final decision to learn the answer, the Justices’ questions highlight some of their concerns.
In the PTO’s recent report on the implementation of the 2011 America Invents Act, the law that created IPR proceedings, the PTO asked Congress to amend the statute to loosen the requirements to file a petition for IPR and to maintain an IPR proceeding.
Among the mechanisms that protect patent owners from misuse of IPR are requirements that limit when a petition for IPR may be filed and who may file it. In its recent report to Congress, the PTO recommended those requirements be loosened.
In patent litigation, forum matters. Whether because of the convenience of keeping the dispute nearby or the perceived benefits of litigating in a particular court, parties challenging allegations of infringement often secure a preferred forum with a declaratory judgment action, rather than waiting to be sued. But what effect does filing a declaratory judgment action have on the challenger’s ability to then request IPR? Several recent PTAB decisions offer some clarity.
While IPR gets a lot of attention, the strategic value of reissue should not be overlooked. Reissue is a post-grant proceeding that may be a useful way to amend a patent facing IPR. Although claim amendments are allowed during the IPR proceeding, the types of amendments that can be made are currently limited, and patent owners must make their case for amendment under tight deadlines and page limits. As such, only in a handful of IPR trials have claim-saving amendments been allowed.