Chapter 22 Outline

• Jurisdiction: United States

Chapter 22 Challenging Patents in the Uspto (Aia-Implemented Procedures)

§22.01 Introduction

§22.02 Inter Partes Review

[A] Introduction

[1] 2012 Implementation

[2] Statistical Information

[3] Timing and Procedure

[B] Scope

[C] Institution

[1] "Reasonable Likelihood" of Prevailing Standard

[2] Claim Interpretation for Institution Decision

[3] Non-Appealability of Institution Decision

[a] Statutory Basis

[b] In re Cuozzo (Fed. Cir. 2015)

[c] Cuozzo v. Lee (U.S. 2016)

[d] Post-Cuozzo Federal Circuit Decisions on Non-Appealability of PTAB Institution Determinations

[i] Are §315 Time Bar Determinations Appealable to Federal Circuit?

[ii] Assignor Estoppel Not a Bar to Seeking IPR

[D] Estoppel Effect

[E] Timing Issues

[1] Time Bars to Filing an IPR in the USPTO

[a] Prior Declaratory Judgment Action Challenging Validity [35 U.S.C. §315(a)]

[b] Prior Infringement Action by Patentee Against IPR Petitioner, Its Privy, or Real Party in Interest [35 U.S.C. §315(b)]

[i] Judicial Non-Reviewability of PTAB §315(b) Time-Bar Determinations

[a] Achates (Fed. Cir. 2015)

[b] Wi-Fi One I (Fed. Cir. 2016)

[c] Wi-Fi One II (Fed. Cir. 2018) (en banc)

[d] Thryv (U.S. 2020)

[ii] Meaning of "Privy" in 35 U.S.C. §315(b)

[2] Stays of Parallel District Court Litigation When IPRs Have Been Filed

[a] Automatic Stay

[b] Discretionary Stay

[F] Broadest Reasonable Construction Rule for IPRs

[1] Propriety of BRC

[a] Generally

[b] In re Cuozzo (Fed. Cir. 2015)

[c] Cuozzo v. Lee (U.S. 2016)

[2] Limits on BRC

[3] 2018 Repeal of BRC Standard for AIA-Implemented Post-Issuance Proceedings

[G] Motions to Amend Claims

[1] Legal Framework

[2] Prior Art Not Relied on to Institute

[3] Prior Art in Original Prosecution

[4] Burden of Proof for Substitute Claims: In re Aqua Products (Fed. Cir. 2017) (en banc)

[a] Introduction

[b] Aqua Prods. (Fed. Cir. 2016) (Vacated Panel Decision)

[c] Grant of Rehearing En Banc in Aqua Prods.

[d] En Banc Decision in Aqua Prods. v. Matal (Fed. Cir. Oct. 2017)

[i] Opinion of Judge O'Malley

[ii] Opinion of Judge Taranto

[iii] Opinion of Judge Reyna

[iv] Opinion of Judge Moore

[v] Opinion of Judge Hughes

[e] Post-Aqua Products Federal Circuit Decisions

[5] Federal Circuit Standard of Review

[H] Burdens of Proof

[1] Generally

[2]

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