Category: PTAB Updates

PTO Designates Precedential its Athena Automation Decision on Assignor Estoppel in IPR

Author: Jason E. Stach
Editor: James D. Stein 

The PTAB designated as precedential its Institution Decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013). According to the Patent Office’s message announcing this new precedential designation, “[t]his decision determines that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows ‘a person who is not the owner of a patent’ to file a petition for inter partes review.” Continue reading

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Supreme Court to Decide Whether Final Written Decision Must Address Every Challenged Claim in an IPR Petition

Authors: James D. Stein 
Editor: Jason E. Stach

The Supreme Court granted certiorari to review the Federal Circuit’s decision in SAS Institute Inc. v. Lee, 825 F.3d 1341 (Fed. Cir. 2016). The question presented is whether the PTAB must issue a final written decision as to every claim challenged by the petitioner in an IPR petition or only as to some of the challenged claims. For more, see our coverage on Finnegan’s Federal Circuit IP Blog.

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Wi-Fi One’s Supplemental Brief Urges En Banc Federal Circuit to Permit Appellate Review of PTAB Time-Bar Decisions

Authors: Robert K. High III
Editor: James D. Stein

Wi-Fi One has submitted its supplemental briefing in Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946, urging the en banc court to overturn its decision in Achates Reference Publishing Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), holding that that the PTAB’s decision regarding the timeliness of an IPR petition under 35 U.S.C. § 315(b) is unreviewable. In Achates, the Federal Circuit interpreted § 314(d), which makes the decision whether to institute “final and nonappealable,” as precluding this review. Continue reading

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