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Courts Shed Light on the Scope of Federal Court Review of Patent Office Decisions Initiating AIA Patent Challenges

By Jose C. Villarreal and Joel C. Boehm
September 02, 2014

Effective September 2012, the Leahy-Smith America Invents Act (AIA) established new ways to challenge the validity of a patent before the United States Patent and Trademark Office (PTO). Pub. L. No. 112-29, 125 Stat. 284 (2011). These proceedings include inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM Review). Such proceedings begin with a petition for review, to which a patent-holder can respond before the Patent Trial and Appeal Board (PTAB) makes an initial decision whether to institute review.

The AIA provides that the PTAB's initial decision on whether to institute proceedings “shall be final and nonappealable.” 35 U.S.C. '314(d) (IPR); '324(e) (PGR and CBM Review). But the precise meaning of this provision has already been disputed. Recent decisions have begun to shed light on the scope of review federal courts have on a PTAB initial determination.

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