98 J. Pat. & Trademark Off. Soc'y 105 (2016)
Federal Circuit Review of USPTO Inter Partes Review Decisions, by the Numbers

handle is hein.journals/jpatos98 and id is 121 raw text is: 




105


                        Federal Circuit Review of

  USPTO Inter Partes Review Decisions, by the Numbers:

    How   the  AIA  Has   Impacted the Caseload of the Federal Circuit



                   Evan   J. Wallach*   & Jonathan J. Darrow'









    When   Congress   enacted  the  Leahy-Smith   America   Invents  Act  (AIA)  in
2011,1 an accompanying House Report explained that in the nearly sixty years
since the landmark   1952  Patent Act2  last brought comprehensive reform to the
patent  arena, changes   in the  economy   and  in patent  litigation practices  had
produced   a clear need   to update  the patent  laws.3  Indeed,  in the  1980s  and
1990s  the patent system   itself changed  considerably,  expanding   along  a num-
ber  of dimensions. The Bayh-Dole Act of 1980 substantially expanded uni-
versity patenting  associated  with federally  funded  research,  while  the United
States Department   of Justice began  to take a more relaxed  approach   to antitrust
enforcement   in the  patent domain.5            Decisions of the Supreme Court and of
the United  States Court   of Appeals  for the Federal  Circuit (Federal  Circuit)
paved  the  way  for broader  patenting  in the fields of biotechnology (Diamond
v. Chakrabarty,6 1980), computer software (Diamond v. Diehr,7 1981), and busi-

    SJudge, United States Court of Appeals for the Federal Circuit. The views expressed herein are entirely those
of the authors and do not necessarily represent those of any entity or institution with which they are affiliated.
    tResearch Fellow, Program On Regulation, Therapeutics, And Law (PORTAL), Brigham & Women's Hospi-
tal / Harvard Medical School. Dr. Darrow is admitted to the California and patent bars, and is currently serving
as Senior Law Clerk to the Honorable Evan J. Wallach. The authors wish to thank Lukman Azeez, Stephen
Darrow, Rudy Fink, Christopher Geyer, Patrick Holvey, Sarah Jelsema, Nathan Kelley, Aaron Kesselheim, Devin
Sikes, Matthew Touton, and Wei Wang for their helpful comments.
  'Pub. L. No. 112-29, 125 Stat. 284 (2011).
  2Pub. L. No. 82-593, 66 Stat. 792 (1952).
  3H.R. Rep. No. 112-98(I), at 38 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 68 (hereinafter House Report).
  4An Act to Amend the Patent and Trademark Laws (Bayh-Dole Act), Pub. L. No. 96-517, § 6(a), 94 Stat.
3015, 3018-28 (1980) (codified as amended at 35 U.S.C. §§ 200-212 (2016)).
  sSusan S. DeSanti et al., To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,
FED. TRADE COMM'N, Oct. 2003, at 22 (In the 1980s, [n]ew economic learning led to more complex and pro-
patent understanding of how antitrust should view conduct with respect to patents.). In 1981, for example, the
Antitrust Division of the Department of Justice indicated its inclination to take a more permissive approach to
certain practices involving patents, including some types of tying arrangements, requirements that a licensee
grant-back rights to improvements, and resale restrictions. See Abbott B. Lipsky, Current Antitrust Division
Views on Patent Licensing Practices, 50 AwrrrRusr L.J. 515, 518 (1981).
  6447 U.S. 303 (1980).
  7450 U.S. 175 (1981).


98 J. PAT. & TRADEMARK OFF. Soc'y 105(2016)

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