On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022).  The PTAB’s denial relied primarily on the late stage of the ITC investigation.

On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b).  Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).

On March 9, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming estoppel and obviousness rulings by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Uniloc 2017 LLC v. Facebook Inc., ___ F.3d ___ (Fed. Cir. March 9, 2021).  The CAFC ruled that it had jurisdiction to review the PTAB’s decision as to estoppel related to the inter partes review (“IPR”) estoppel provision of Section 315(e)(1).  The CAFC further ruled that a joined party to a first IPR was not barred from maintaining review of claims that the primary challenger became estopped from challenging based on a decision in a second IPR to which the challenger was joined.
 

On April 20, 2020, the Supreme Court of the United States issued an opinion holding that an inter partes review (“IPR”) institution decision by the United States Patent and Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on the impact of a dismissal-without-prejudice of a district court complaint on 35 U.S.C. § 315(b)’s one-year time-bar limitation to file an IPR is not appealable.  Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, 590 U.S. ____ (2020).  According to the Court, 35 U.S.C. § 314(d)’s prohibition on appeal of IPR institution decisions and the Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 579 U.S. ___ (2016) were determinative.
 

On January 9, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision on reconsideration by the Patent Trial and Appeal Board (PTAB) that held challenged claims to be unpatentable on a non-instituted ground that was not addressed by the PTAB in its final written decision.  AG Technologies S.A. v. Amazon.com Inc., —F.3d—, (Fed. Cir. Jan. 9, 2019).  The CAFC ruled that the PTAB had not exceeded its statutory authority or deprived the patent owner of fair process by belatedly considering the additional ground.

On March 23, 2018, a divided panel of the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board (PTAB) had not sufficiently explained its reasoning in a final written decision invalidating certain patent claims, and reversed the invalidity ruling.  DSS Tech. Mgmt. v. Apple Inc., appeal nos. 2016-2523 and 2016-2524.  One member of the panel (Newman, J.) dissented, both on the merits, and on whether the panel should have ordered remand instead of reversing.

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On March 13, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a party was collaterally estopped to challenge a Patent Trial and Appeal Board (PTAB) ruling on a claim-construction issue.  The estoppel arose from a previous IPR decision concerning a related patent.  Nestle USA, Inc. v. Steuben Foods, Inc., appeal no. 2017-1193.

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