AIA Blogs

  • Federal Circuit Rules That Not All Petitioners Have Standing to Appeal Adverse IPR Results
    Monday, January 23, 2017

    The Federal Circuit recently dismissed an appeal from an inter partes review proceeding where the appellant/petitioner failed to establish that it had constitutional standing to maintain an appeal. Phigenix, Inc. v. Immunogen, Inc., No. 2016-1544, 2017 WL 74762 (Fed. Cir. Jan. 9, 2017). The appeals court ruled that a IPR petitioner must demonstrate constitutional standing […]

  • Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition
    Monday, January 9, 2017

    The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 4, 2016)(granting petition for rehearing en banc). One unresolved […]

  • PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References
    Tuesday, December 13, 2016

    In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness.  In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged claims were unpatentable as obvious when the Board failed to articulate a reasoned explanation for combining two prior art references. In re […]

  • PTAB Decision To Terminate IPR Proceedings After Institution Is Not Appealable
    Friday, October 21, 2016

    Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977 (Fed. Cir. Oct. 20, 2016) Applying the Supreme Court’s interpretation of the AIA’s provision making inter partes review institution decisions “final and nonappealable,” 35 U.S.C. § 314(d), the U.S. Court of Appeals for the Federal Circuit held that a Patent Trial and Appeal Board decision […]

  • Supreme Court denies Cert in Cases Challenging Constitutionality of AIA Trials
    Thursday, October 13, 2016

    On October 11, 2016, the US Supreme Court denied petitions for certiorari filed in two cases by parties challenging the constitutionality of post grant proceedings instituted under the Leahy-Smith America Invents Act. In the first case, Cooper v. Lee, No. 15-955, the petitioners argued that 35 U.S.C. § 318(b), which permits the USPTO Patent Trial and […]