News and Cases Involving Post-Grant Proceedings at the Patent Office
Federal Circuit Reverses PTAB’s Construction for Declining to Apply Prosecution Disclaimer
The Federal Circuit held that the PTAB erred by declining to apply the doctrine of prosecution disclaimer in an IPR. If, during prosecution of a patent, the patent applicant makes…
District Court Relies on IPR Decisions to Construe Claims
The Eastern District of Michigan concluded that the meanings of disputed claim terms were bound by the terms' constructions in IPR. In an IPR, claims of an unexpired patent are…
PTAB Terminates Instituted IPRs After Petitioner Becomes Estopped from Challenging the Claims
The PTAB terminated two instituted IPRs because the petitioner became estopped from challenging the claims as a result of final written decisions issuing in other IPRs. The estoppel provisions of…
PTAB Institutes IPR Based on Art Previously Considered During Prosecution
The PTAB instituted IPR based on a reference that had been considered by the examiner during prosecution because the petition relied upon a previously unconsidered portion of the reference. Under…
Federal Circuit: Time-Bar Determinations of IPR Petitions Are Appealable
The Federal Circuit overrules its precedent and holds that a determination as to whether a petition is time-barred is reviewable on appeal. Under 35 U.S.C. § 315(b), a petition for…