Fish Senior Principal John Dragseth was recently quoted in Law360‘s article “Who Can Appeal PTAB Decisions? Here’s What We Know,” on July 9, 2019.
The Court in Oil States was careful to emphasize the narrowness of its holding by explicitly stating that it did not foreclose future constitutional challenges of IPR under the Due Process Clause or the Takings Clause. In the year since the Court left this door open, many have tried to guess what those arguments might look like and how successful they would be. The most likely grounds for future constitutional challenges to IPR are based on those the Court suggested as well as challenges based on the retroactive application of IPR to pre-America Invents Act (AIA) patents.
The Supreme Court announced Monday that it will decide whether the Federal Circuit may review Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in cases where it finds that 35 U.S.C. § 315(b)’s one-year time bar does not apply.
A recent dispute between BTG International Limited and several generics companies has raised an interesting question regarding the role of estoppel arising from successful inter partes review (IPR) challenges—specifically, the question of whether a petitioner, who is successful in invalidating patents in IPR proceedings, is estopped from raising those same arguments in pending district court litigation.
The Court held that the federal government is not a “person” within the meaning of the AIA and is therefore ineligible to pursue the post-grant patent challenges authorized by that act, including inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review.