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Discontent At Fed. Circ. Grows Post Cuozzo

December 22, 2016

In the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), Congress established inter partes review as a new administrative proceeding within the U.S. Patent and Trademark Office for certain challenges to the validity of issued patents. More than 5,000 IPR petitions have been filed to date, and more often than not the PTO institutes review of at least some of the challenged claims. In over 80 percent of IPRs that have reached a final decision, the PTO has invalidated some or all of the instituted claims.

One issue presented by this increasingly popular avenue for challenging patent claims is the availability of judicial review. In appeals from final decisions, the Federal Circuit will review the PTO’s final substantive findings of invalidity, but has largely declined to review claims that the PTO exceeded its statutory authority when it first instituted the IPR. This limitation on judicial review was highlighted by the very first IPR instituted by the PTO — and ultimately reached the U.S. Supreme Court.

To continue reading Irena Royzman and Jason Vitullo's article from Law360 please click here.