Tag Archives: AIA Trials

The America Invents Act (AIA) of 2011 authorized the creation of a set of administrative trials (AIA Trials), including Inter Partes Review (IPR) proceedings, Post Grant Review (PGR) proceedings and transitional Covered Business Method Review (CBM) proceedings. In each of these proceedings, anyone can file a petition to challenge an issued patent, and, after instituting the trial, the Patent Trial and Appeal Board (PTAB) will decide whether the challenged claims should be confirmed or cancelled.

Did Jarkesy Undermine Oil States? ParkerVision Thinks So

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by Dennis Crouch

In 2018, the Supreme Court's 7-2 decision in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. 325 (2018) affirmed the constitutionality of inter partes review (IPR) proceedings. The Court held that patents are "public rights" and thus may be canceled through congressionally authorized administrative proceedings without violating Article III or the Seventh Amendment right to a jury trial. This decision was a significant win for proponents of the America Invents Act (AIA) and those seeking to use the Patent Trial and Appeal Board (PTAB) as an efficient mechanism to cancel issued patents.

Fast forward to 2024, and a number of us were watching the non-patent case of SEC v. Jarkesy, 144 S. Ct. 2117 (2024), wondering if it might destabilize Oil States. Jarkesy indeed narrowed the scope of what qualifies as a "public right," potentially reopening the debate on the constitutionality of IPRs.

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Apple v. Vidal: APA Compliance in IPR Discretionary Denial Rules

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by Dennis Crouch

I have written several times about the Chestek case regarding notice-and-comment requirements under the APA.  A second notice-and-comment case is also pending before the Federal Circuit, potentially having a much greater impact on patent practice.  The case, Apple v. Vidal, focuses on IPR discretionary denials, which the USPTO implemented as policy without any formal rulemaking notice-and-comment.

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No Concrete Plans, No Standing: Federal Circuit’s Latest on IPR Appeals

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by Dennis Crouch

The recent Federal Circuit decision in Platinum Optics v. Viavi Solutions focuses attention once again on the case-and-controversy requirement derived from Article III of the U.S. Constitution, which extends federal judicial power to "Cases" and "Controversies."

The seemingly simple phrase has been the subject of extensive judicial jockeying in the development of the doctrine we know as "standing."

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Obtaining vs. Maintaining: How SoftView v. Apple Reshapes Patentee Estoppel

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by Dennis Crouch

This is our second discussion of collateral estoppel in as many days.  Yesterday I wrote about Koss v. Bose, a case where the Federal Circuit concluded that a district court's final judgment of invalidity had a preclusive effect on USPTO IPR analysis -- rendering the patentee Koss's appeal moot.   Today's focus is on SoftView v. Apple, and a focus on the USPTO's estoppel regulations as they apply between an IPR and reexamination proceeding. Case No 23-1005 (Fed. Cir. July 26, 2024).

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