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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Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”