Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

IP News

By Shaleen J. Patel
February 01, 2020

Do Not Pass Go? U.S. Supreme Court to Review Federal Circuit's Finding of Justiciability

The U.S. Supreme Court is set to determine just how "final and nonappealable" a decision to institute an inter partes review is. The highest court is primed to render yet another opinion related to patent and administrative law in Thryv, Inc. v. Click-to-Call Techs., L.P., No. 19-916 (2019) after oral arguments were heard on Dec. 9, 2019.

Since the Leahy-Smith America Invents Act (AIA) was enacted in 2011, parties accused of patent infringement have had new avenues of challenging patent validity outside of Article III courts. The most popular choice for litigants has been inter partes review (IPR). IPR allows the Patent Trials and Appeals Board (PTAB or Board) to expedite a litigation-like experience between parties to determine issues of patentability that could ultimately lead to a prior-granted patent being killed by the same agency that once gave it life.

In some instances, a party accused of infringing a patent in a district court action may get two opportunities to challenge the validity of the asserted patent. An IPR can be filed no later than 12 months after a complaint was filed, and an IPR petition takes, at a statutory maximum, 18 months to completion. Accordingly, if the district court action does not get stayed pending IPR, the accused infringer will be able to challenge the validity of the patent in both the district court and at the Patent Office. Parties who do not plan carefully are not eligible for IPRs at all. 35 U.S.C. §315(b) makes IPRs unavailable for a party who is accused of infringing a patent and has waited over 12 months after being served with a complaint to file. See, 35 U.S.C. §315(b) ("[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.").

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Removing Restrictive Covenants In New York Image

In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?

The Benefits of Blockchain for e-Discovery and Data Preservation Image

As businesses across various industries increasingly adopt blockchain, it will become a critical source of discoverable electronically stored information. The potential benefits of blockchain for e-discovery and data preservation are substantial, making it an area of growing interest and importance.