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16 January 2017Patents

WIPR survey: Judges should be able to review PTAB time-bar appeals

Judicial review should be available for a patent owner to challenge Patent Trial and Appeal Board (PTAB) determinations that say inter partes review (IPR) petitions satisfy the timeliness requirement, according to WIPR readers.

Responding to our latest survey, 66% of readers said that judicial review should be available in this instance.

WIPR had previously reported that the full US Court of Appeals for the Federal Circuit agreed to assess whether judicial review should be available in the case of Wi-Fi One v Broadcom Corporation.

The court asked Wi-Fi One and Broadcom to file supplemental briefs answering the question of whether it should overrule Achates Reference Publishing v Apple, a case that prevents judicial review by the courts in instances concerning IPR timeliness.

The US Patent and Trademark Office (USPTO) was also invited to share its views as an amicus curiae.

One reader explained that allowing judicial review would add to the “ever-escalating costs of US patent enforcement and challenges”.

They said: “It is this massive cost that is the primary factor in moving patent enforcement to other jurisdictions. However, timeliness will only be relevant in a very small minority of cases, so judicial review may well be acceptable.”

Another reader claimed that the decisions should be left to the USPTO’s discretion.

Under 35 USC, section 315(b), an IPR may not be instituted if “the petition requesting the proceeding is filed more than one year after the date on which the petitioner … is served with a complaint alleging infringement of the patent”.

For this week's survey question, we ask: Last week, WIPR reported that Louis Vuitton requested an en banc rehearing of its parody dispute with My Other Bag (MOB), arguing that the Second Circuit based its parody finding solely on its subjective view that MOB’s products “were obviously a joke”. Should the court grant the request?

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More on this story

Patents
5 January 2017   The full US Court of Appeals for the Federal Circuit has agreed to assess whether judicial review is available for a patent owner to challenge Patent Trial and Appeal Board determinations that say inter partes review petitions satisfy the timeliness requirement.
Patents
9 January 2018   Parties can file court challenges against determinations by the Patent Trial and Appeal Board on whether an inter partes review petition is timely, the US Court of Appeals for the Federal Circuit ruled yesterday.