The American Rule Is Still the Rule

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John P. Isacson

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.

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PTAB Identifies Two Prior Decisions as Precedential

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Edwin V. (Ted) Merkel

The PTAB designated its termination decision in Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR2018-00224 (Paper 18)(entered October 1, 2018) as precedential on September 9, 2019, and its decision denying institution in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511 (Paper 11)(entered January 31, 2019) as precedential on August 29, 2019.  These cases illustrate application of the Federal Circuit’s decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), which held that 35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner ‘is served with a complaint’ alleging patent infringement,” and that § 315(b) “does not contain any exceptions or exemptions for complaints . . . that are subsequently dismissed, with or without prejudice.”  Click-to-Call, 899 F.3d at 1330.

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IPR Institution Is Not Permanent, and Is Nonappealable

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

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John Isacson

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.

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