Law Commons^™

Meeting The Challenges To America's Economic Future: Charting The Course In U.S. Intellectual Property & Innovation Policy, With An Introduction By Megan M. La Belle, International Ip Commercialization Council

Catholic University Law Review

No abstract provided.

Balancing The Competing Functions Of Patent Post-Grant Proceedings, Michael Xun Liu

Journal of Intellectual Property Law

Since the 1980s, the United States Patent and Trademark Office has amended or revoked patents through post-grant proceedings. These are quasi-judicial proceedings that are often used to resolve patent disputes. But aside from adjudicating private disputes, post-grant proceedings also aim to protect the public against invalid patents, create more certainty in patent rights, and bolster confidence in the patent system. These functions are often described as “examinational” because they rely on the PTO’s ability to reexamine the validity of issued patents.

This Article explores the extent to which post-grant proceedings under the America Invents Act (AIA) perform examinational functions. Although …

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Akron Law Review

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments …

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Faculty Scholarship

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments …

When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat

Faculty Scholarship

The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish in …

Uncertainty About Real Parties In Interest And Privity In Aia Trials, Evan Day, Kevin Patariu, Bing Ai

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Ptab Precedential Decision: Putting The Hammer Down On Filing Serial Petitions?, Ashley N. Klein, Warren J. Thomas

Chicago-Kent Journal of Intellectual Property

Petitioners for inter partes review proceedings under the America Invents Act routinely file serial petitions to challenge a single patent. Patent owners have criticized such “follow-on” petitions as abusive. The Patent Trial and Appeal Board’s recent precedential opinion in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017), lays out seven non-exhaustive factors to guide the Board’s consideration of such “follow-on” petitions. This Article summarizes the Board’s analysis of follow-on petitions prior to General Plastic, examines how General Plastic has affected petitioners’ success in having such petitions instituted, and suggests strategies for practitioners …

To Stay Or Not To Stay Pending Ipr? That Should Be A Simpler Question, Joel Sayres, Julie Wahlstrand

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Master Of The Petition: Exploring The Tension Between The Ptab And Petitioners In Controlling The Scope Of Aia Trials, Raja N. Saliba, Grant Shackelford

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Post-Grant Life: Coordinating & Strategizing Challenges Of Issued Patents In Multiple Continents, Karen E. Sandrik

Chicago-Kent Journal of Intellectual Property

With the enactment of the Leahy-Smith American Invents Act (AIA), U.S. patent law gained a new post-grant opposition system and the Patent Trial and Appeal Board (PTAB). While the U.S. post-grant opposition system has some similarities to the post-grant systems, such as that in the European Union, Japan, South Korea, Canada, and Australia, there are also notable differences. Navigating one’s own post-grant system can be challenging, but doing so in multiple patent offices around the world is daunting. Differences in these proceedings not only present the potential for parties to make costly errors, but also to engage in strategic behavior. …

Yes, The Ptab Is Unconstitutional, Gregory Dolin, Md

Chicago-Kent Journal of Intellectual Property

No abstract provided.

I Fought The Shaw: A Game Theory Framework And Approach To The District Courts' Struggle With Ipr Estoppel, Andrew V. Moshirnia

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Proper Appellate Standard Of Review For Ptab Factual Findings Made Incidental To Claim Construction, A. David Brzozowski Ii

Catholic University Law Review

The America Invents Act (AIA) represents the most significant change to U.S. patent law since the 1952 Patent Act. Since its passage, the AIA has drawn wide support from the intellectual property community, primarily due to the new post-grant opposition proceedings the Act created.

However, certain aspects of the new system created by the AIA are controversial. Specifically, judges and practitioners alike debate which standard of review courts should apply to the factual findings made by the Patent Trial and Appeals Board (PTAB) during these opposition proceedings. While the Federal Circuit has reviewed all factual findings made at the Patent …

Quick Decisions In Patent Cases, Paul Gugliuzza

Faculty Scholarship

Patent litigation is notoriously expensive and time consuming. In the past decade, however, patent law has changed in many ways that expedite resolution of infringement disputes. This article identifies and evaluates this trend toward quick decisions in patent cases. Balancing the savings in litigation costs against the potential for error, the article defends many recent and controversial developments, including the Supreme Court’s invigoration of the patent eligible subject matter requirement, the new administrative proceedings created by the America Invents Act, and changes in the requirements for pleading patent infringement. These developments permit defendants to obtain rulings of invalidity or noninfringement …

May You Live In Interesting Times: Patent Law In The Supreme Court, Seth P. Waxman

Chicago-Kent Journal of Intellectual Property

No abstract provided.