Tag Archives: inter partes review

Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

Photo of Charles CarsonBy Charles Carson on Posted in Patent
In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review … Continue Reading

Standing Necessary To Appeal an Inter Partes Review Decision

Photo of Kevin FlynnBy Kevin Flynn on Posted in Patent
Article III of the Constitution grants the federal judiciary the power to decide “cases and controversies.”[1] “Standing,” the legal concept ensuring that federal courts review only cases and controversies, focuses on the party bringing suit to analyze the appropriateness and constitutionality of judicial review. The court-limiting effects of standing help ensure that the separation of … Continue Reading

PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim

Photo of David FarsiouBy David Farsiou on Posted in Patent
In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged.  The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a … Continue Reading

Federal Circuit Panel Splits in Important Decision Regarding Its Jurisdiction over Institution of IPRs

By Allen Sokal on Posted in Patent
In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Appeal Nos. 2015-1726, 1727 (Sept. 23, 2016), the panel majority, consisting of Judges Lourie (the opinion’s author) and Stoll, differed sharply with dissenting Judge Plager over the court’s jurisdiction to review the PTAB’s institution of an inter partes review. This decision could have broad implications. … Continue Reading
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