An interesting question has been presented to the U.S. Supreme Court when it granted a writ of certiorari on October 26, 2018. That is, is the United States Government, through one of its agencies, a “person” for purposes of the America Invents Act (AIA), the most recent Patent Act from 2012. The case, Return Mail …
Category: PTAB
Fed Circuit Watch: PTAB Bungles Real Party-in-Interest Analysis
On September 7, 2018, the Court of Appeals for the Federal Circuit decided Worlds Inc. v. Bungie, Inc.,[1] representing another case in the growing case law of IPRs and specifically, the time-bar application and collateral estoppel. Worlds Inc. owns U.S. Patent Nos. 7,945,856 (‘856), 8,082,501 (‘501), and 8,145,998 (‘998). All are directed to methods and …
Fed Circuit Watch: Broad Wins Latest CRISPR Court Battle
On September 10, 2018, the Court of Appeals for the Federal Circuit decided Regents of the Univ. of Calif. v. Broad Inst., Inc.,[1] in the latest court battle in the CRISPR patent challenge pitting three of the nation’s largest research universities against each other. CRISPR, or “Clustered Regularly Interspaced Short Palindromic Repeats,” is a family …
Fed Circuit Watch: PTAB Error to Not Consider Arguments in Reply Brief
On August 27, 2018, the Court of Appeals for the Federal Circuit handed down Ericsson Inc. v. Intellectual Ventures I LLC,[1] in which the rules played an important role in decisions made in the case. The facts are as follows. Intellectual Ventures I owns U.S. Patent No. 5,602,831 (‘831), entitled “Optimizing packet size to eliminate …
Fed Circuit Watch: USPTO’s §315(b) “Real Party in Interest” Definition Too Narrow
Inter partes reviews (IPRs) (37 C.F.R. §42.100 et seq.) may be instituted by the USPTO, at its discretion, but there are some defined statutory requirements. On August 17, 2018, the Court of Appeals for the Federal Circuit unsealed an opinion that was originally written on July 9, 2018, Applications in Internet Time, LLC v. RPX Corp.,[1] which …
Fed Circuit Watch: PTAB Anticipation Analysis All Wrong
Anticipation in patent law means the claimed invention lacks novelty, or is not new; in other words, the invention was already invented.[1] Anticipation, as codified in 35 U.S.C. §102(a) (or §102(b) in pre-AIA statute), is the gateway substantive legal analysis which must take place in order to assess patentability of an invention. Therefore, when the …
Fed Circuit Watch: Hyperlinked Material in Federal Register Notice is Prior Art
What constitutes prior art is not as easy as it may seem. While it may be uncontroverted that a Federal Register notice is prior art, the hyperlinked materials in that notice is what was at issue in Jazz Pharm., Inc. v. Amneal Pharm., Inc.,[1] decided by the Court of Appeals for the Federal Circuit on …
Fed Circuit Watch: No Sovereign Immunity in IPR
Sovereign immunity is the right of the government to not be sued absent waiver or consent. The federal government retains sovereign immunity rights.[1] States, through the Eleventh Amendment, also have sovereign immunity in federal courts.[2] Indian tribes also have sovereign immunity absent waiver or congressional abrogation.[3] This final type, tribal sovereign immunity, has never been …
Fed Circuit Watch: PTAB Decisions Questioned in Light of SAS and Aqua Products
On June 19, 2018, the Court of Appeals for the Federal Circuit issued Sirona Dental Systs. GmbH v. Institut Straumann AG.[1] The case is important because two other recent court decisions – SAS and Aqua Products – affected certain details of this case that ultimately affected how the Fed Circuit ruled. In SAS, the U.S. …
Fed Circuit Watch: All Claims and Grounds Must Be Addressed Post-SAS
On July 2, 2018, the Court of Appeals for the Federal Circuit issued a mandate in Adidas AG v. Nike, Inc., in yet another post-SAS determination. Before a panel composed of Judges Moore, Wallach, and Taranto, issued the order remanding the case back to the PTAB to address all claims and grounds originally raised in …