Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today we highlight:
- a blog post discussing how a recent “concurrence . . . provides more structure to the ‘skilled searcher conducting a diligent search’ estoppel test” related to inter partes review proceedings;
- an article highlighting how a recent Federal Circuit decision “suggests that plaintiffs may not have the final word” on whether “trade secret plaintiffs can try to channel cases into other courts of appeals by strategically withholding patent claims”;
- a blog post covering how the USPTO “issued a notice designating as precedential a Sua Sponte Director Review Order of a Patent Trial and Appeal Board . . . decision granting institution in three inter partes review . . . proceedings”; and
- an article noting how, for “one day in July, Washingtonians will get access to an under-the-radar building steps away from the White House that’s filled with artifacts spanning American history.”
Dennis Crouch published a blog post for PatentlyO discussing how a recent “concurrence . . . provides more structure to the ‘skilled searcher conducting a diligent search’ estoppel test” related to inter partes review proceedings. Crouch notes that 35 U.S.C. 315(e)(2) “creates estoppel prohibiting an IPR petitioner . . . from later asserting in patent litigation ‘that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.'” According to Crouch “the Judge Stark opinion breaks the reasonableness process into two steps.” For more information, see Ironburg Inventions Ltd. v. Valve Corp.
Alexander Gross, Ann-Elizabeth Ostrager, and Dan Richardson wrote an article for Bloomberg Law highlighting how a recent Federal Circuit decision “suggests that plaintiffs may not have the final word” on whether “trade secret plaintiffs can try to channel cases into other courts of appeals by strategically withholding patent claims.” The authors argue the decision “provides trade secret defendants with a roadmap to have their appeals heard by the Federal Circuit, rather than a regional circuit court. For more information, check out the opinion in Insulet Corp. v. EOFlow, Co.
Eileen McDermott penned a blog post for IP Watchdog covering how the USPTO “issued a notice designating as precedential a Sua Sponte Director Review Order of a Patent Trial and Appeal Board . . . decision granting institution in three inter partes review . . . proceedings.” McDermott explains the “order waived the 14-day deadline for requesting Director Review of a decision to institute trial and denied institution.” According to McDermott, the “waiver extends the deadline from 14 days to 30 days and ‘puts requests for Director Review of decisions to institute trial on equal footing to requests for Director Review of final decisions or decisions not to institute trial.’”
Mimi Montgomery authored an article for Axios D.C. noting how, for “one day in July, Washingtonians will get access to an under-the-radar building steps away from the White House that’s filled with artifacts spanning American history.” Montgomery explains that the day is “a chance for anyone to visit The Howard T. Markey National Courts Building complex, which houses the U.S. Court of Appeals for the Federal Circuit and is normally reserved for scheduled student tours.” As explained by Montgomery, “visitors can learn about the building’s past as Dolley Madison’s home, an essential site for the women’s suffrage movement, and NASA’s first headquarters.”