Tagged with Time Bar

En Banc Federal Circuit to Decide Reviewability of PTAB Time-Bar Decisions

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

The Federal Circuit has found that it may not review a PTAB determination that an IPR petition was timely-filed within 35 U.S.C. § 315(b)’s 1-year bar. Achates Reference Publishing Inc. v Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). The law may soon change, as the Federal Circuit recently granted Wi-Fi One’s petition for rehearing en banc of its September decision that it may not review the PTAB’s finding that Broadcom’s IPR petitions were not time-barred. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Jan. 4, 2017). Continue reading

Tagged , , , , , , ,

PTO Designates New Precedential Opinions on Additional Discovery, One-Year Time Bar, Substitute Claims, and Interpretation of § 312(a)(2)

Author: Alex Kwan-Ho Chung, Ph.D.
Editor: Jason E. Stach

On Tuesday, May 10, 2016, the PTAB designated the following five decisions as precedential, providing authority on various procedural issues including: criteria for additional discovery; the nature of service triggering the one-year time bar; the patentee’s burden to demonstrate the patentability of substitute claims; and an interpretation of § 312(a)(2).

Continue reading

Tagged , , , , , , , , , , , ,

PTO Designates New Precedential Opinions on Final Written Decision Estoppel and the One-Year Time Bar for IPR

Author: Shaton C. Menzie
Editor: James D. Stein

On Wednesday, January 13, 2016, the PTAB designated two new “precedential” decisions, providing authority on issues of estoppel stemming from a final written decision and the one-year deadline for IPR filings:

  • Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper. No. 28) (May 14, 2015)
  • LG Electronics v. Mondis Technology, Ltd., IPR2015-00937 (Paper No. 8) (Sept. 17, 2015)

In Westlake, the petitioner filed a petition (CBM2014-00008) challenging all claims of a patent, but the Board only instituted and rendered a final written decision on some of the claims. When Westlake filed a second petition (CBM2014-00176) challenging the subset of the claims for which the Board did not institute review, Credit Acceptance argued that the petition was barred under 35 U.S.C. § 325(e)(1) because “th[e] [earlier institution and final written] decisions [together] resolved the Petitioner’s challenges to all claims.” Paper 25 at 2-3. The Board disagreed, finding “that estoppel is applied on a claim-by-claim basis” because, “[b]y its terms, estoppel is invoked under Section 325(e)(1) as to ‘a claim in a patent’ that ‘results in a final written decision under’ 35 U.S.C. § 328(a).” Paper No. 28 at 5.

Continue reading

Tagged , , , , , , , , , , , ,