Category Archives: Administrative Agencies

SAS Institute Inc. v. Lee : For the Love of Administrative Efficiency

Author: Max Mauldin*
Editor: Jeff T. Watson

On the same day the Supreme Court issued its much-anticipated decision in TC Heartland v. Kraft, the Court also granted a petition for writ of certiorari in SAS Institute Inc. v. Lee. The question presented in that petition is whether the PTAB must issue a final written decision as to every claim challenged by the petitioner in an IPR petition or only some of the challenged claims.  Continue reading

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Inter Partes Reexamination May Proceed Even If The Requester Has a Change-of-Heart

Author: Jeffrey D. Smyth
Editor: Sydney R. Kestle

In In re AT&T Intellectual Property II, LP, No. 16-1830 (Fed. Cir. May 10, 2017), the Federal Circuit held that the Board did not exceed its statutory authority when instituting an inter partes reexamination because a request and a requester were present at the time of institution. Continue reading

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Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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