Post-Grant Review of U.S. Patents: A Primer
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Keywords

AIA
Patents
Post-Grant Review

Abstract

The validity of an issued U.S. patent may be challenged in a number of forums including the courts and before the United States Patent & Trademark Office. With the enactment of the Leahy-Smith America Invents Act in 2011, a number of important changes to post-grant review of patents have occurred. This article provides an overview of available options.

https://doi.org/10.5912/jcb738
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References

U.S.C. § 319.

U.S.C. § 311(a)–(b) (2012).

See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) (invalidating claims to amplifying and detecting naturally-occurring DNA because amplification steps are conventional).

U.S.C. § 314(a).

U.S.C. § 311(c).

U.S.C. § 315(a)(1), (b).

U.S.C. § 315(a)(3).

U.S.C. §§ 316(a)(11), 326(a)(11).

U.S.C. § 314(a)(11) (2012).

U.S.C. § 317(a)–(b) (2012).

U.S.C. § 316(e).

http://www.uspto.gov/sites/default/files/documents/2015-10-31%20PTAB.pdf at 12.

LegalMetric Inter Partes Review Report (March 07, 2016).

U.S.C. § 312(a) (2000); 35 U.S.C. 314(a).

CFR 41.61(a).

U.S.C. § 321(b).

U.S.C. § 321(c).

U.S.C. § 324(a).

http://www.uspto.gov/sites/default/files/documents/2015-10-31%20PTAB.pdf at 12.

CFR 42.302(a).

See 37 C.F.R. § 42.300 (2014).

U.S.C. § 325(e).

U.S.C. § 325(e).

See, e.g., Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *7 (Fed. Cir. Mar. 1, 2016) (finding that the Federal Circuit does not have authority to review the PTAB’s decision to institute review on only a subset of grounds raised in the petition).

See Dell Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549 (PTAB March 26, 2015) (permitting a second IPR on grounds raised in the petition for the first IPR but on which the first IPR was not instituted).

See, e.g., St. Jude Med., Cardology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375-76 (Fed. Cir. 2014) (denying appeal of decision not to institute for lack of jurisdiction).

See In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1279–80 (Fed.Cir.2015); cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016).

In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016).

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).

U.S.C. §§ 141(c).

Kirkendall v. Dep’t of the Army, 573 F.3d 1318, 1321 (Fed. Cir. 2009).

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).

C.F.R. § 42.51(b)(1).

See, e.g., Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, No. IPR2012-00001, 2013 WL 2023626, at *4 (P.T.A.B. Mar. 5, 2013).

U.S.C. § 1337(b)(1).

U.S.C. § 1295(a)(6).

U.S.C. § 1337(d).

See Sealed Air Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties. Accordingly, that [limited exclusion] order was not contingent upon a determination of personal or in personam jurisdiction over a foreign manufacturer. The Tariff Act of 1930 (Act) and its predecessor, the Tariff Act of 1922, were intended to provide an adequate remedy for domestic industries against unfair methods of competition and unfair acts instigated by foreign concerns operating beyond the in personam jurisdiction of domestic courtsâ€).

See Am. Intellectual Prop. Law Ass'n, Report of the Economic Survey 37–38 (2015).

U.S.C. §§ 316(a)(11), 326(a)(11).

Ex Parte Reexamination Filing Data, U.S. Patent and Trademark Office (Sept. 30, 2014) available at http://www.uspto.gov/sites/default/files/documents/ ex_parte_historical_stats_roll_up_EOY2014.pdf

U.S.C. § 1337(b)(1).

LegalMetric Nationwide Patent Litigation Report (April 2015) at 32.

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