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ARTICLE · 07 DECEMBER 2014

Contract Prohibiting Patent Challenges Does Not Preclude Standing To File IPR Petition

Ford Motor Co. v. Paice LLC

United StatesIntellectual Property

Edited by Paul Devinsky and Rita Weeks

Ford Motor Co. v. Paice LLC

Addressing whether it has the authority to decide a contractual dispute in the context of a post issuance proceeding under the America Invents Act (AIA), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) denied a patent owner's argument that the petitioner lacked standing by virtue of a provision in an arbitration agreement with the petitioner that purportedly limits the petitioner's ability to challenge the validity of the patent, finding that the issue was one of contract law that fell outside the PTAB's authority under the AIA.  Ford Motor Co. v. Paice LLC, Case No. IPR2014-00570 (PTAB, Sept. 30, 2014) (DeFranco, APJ).

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