Fish & Richardson - News and Events
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News & Events


July 3, 2019

One Year after Oil States, Constitutional Questions Remain

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.

June 25, 2019

Supreme Court Grants Certiorari in Dex Media v. Click-to-Call Technologies

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.

June 21, 2019

Questions Remain Regarding the Role of Estoppel Arising from Successful IPR

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.

June 13, 2019

Supreme Court Bars AIA Patent Challenges by the Government in Return Mail Decision

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.

June 11, 2019

Navigating Uncertainty—Addressing Purely Functional Claim Limitations in a Post-Williamson World with Ongoing PTAB Climate Change

Patent litigants on both sides of the docket struggle with claim limitations that do not expressly recite “means for” language yet define the scope of the invention in terms of functionality rather than structure. In the wake of Williamson v. Citrix Online, LLC,  tribunals have increasingly found that claim limitations reciting so-called nonce words overcome the legal presumption against § 112, ¶ 6 (or means-plus-function) treatment. This Article briefly discusses the Williamson decision, its legal and practical effect, and strategic considerations for petitioners and patent owners at the PTAB.

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