Federal Circuit Holds That Failure To Provide Patentee Opportunity To Respond To Portion Of Prior Art Reference Not Disclosed In IPR Petition But Relied On By Board In An IPR Decision Can Be A Procedural Violation

Fitzpatrick Case Update
November 9, 2016

The Federal Circuit today in In re NuVasive, Appeal Nos. 2015-1672 and 2015-1673, found that the Patent Trial and Appeal Board in an inter partes review (IPR) proceeding violated a patentee’s rights under the Administrative Procedure Act by canceling patent claims based on a portion of a prior art reference that was not specifically identified in the IPR petition, and by denying the patentee the opportunity to address that portion of the reference substantively.  The Federal Circuit thus vacated the cancellation of the claims and remanded the matter to the Board.

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