Protecting the value of a patent is an important part of intellectual property asset management. A lot of strategies for doing this are tried and true, but as we have written about previously, some strategies don't always work.
Legal processes in the United States tend to offer a lot of opportunities to try to reverse a decision if one doesn't go the way you prefer. Litigating challenges of patents is no exception. However, as we have written about previously, just because the option of an appeal is available doesn't necessarily mean that it should be taken.
The bifurcation of legal processes related to intellectual property prosecution can be frustrating. This was highlighted in a post late last year. It reported on a decision by the U.S. Court of Appeals for the Federal Circuit in which the panel said that a doctrine that prevents inventors granted a patent from later challenging the validity of that patent in federal court or before the International Trade Commission does not necessarily prevent such a challenge through inter partes review (IPR).
One aspect of inter partes review (IPR) that has been a source of major contention is that it is an administrative judicial process that operates separately from the normal processes of the U.S. legal system. But, as we noted in an earlier post, the U.S. Supreme Court has ruled it doesn't violate the Constitution.
The idea of a scenario as presented in the blog title might seem silly, but the reality is that, based on legal decisions made by the Patent Trial and Appeal Board and more recently by the U.S. Court of Appeals for the Federal Circuit, it could happen. In fact, it has, specifically in the context of inter partes review (IPR).
Love it or hate it, inter partes review (IPR) is now a judicially endorsed fixture in the Patent Trial and Appeal Board's (PTAB) toolbox. We wrote about this in the first September post on this blog, noting that the U.S. Supreme Court upheld the constitutionality of this administrative form of review in resolving disputes over the validity of granted patents and claims of alleged patent infringement.
Law is always subject to change. That's something that experienced attorneys in any practice area know and appreciate, and the truth of the statement is certainly clear in the context of intellectual property law. In just the past few months, several intellectual property cases have made headlines, and that is what we focus on in our inaugural post for this blog.