Prior Art

News & Analysis as of

Preparing For The Obvious At The PTAB

There is little debate that inter partes reviews have proven to be an effective means of challenging the validity of a patent. During the first two-and-a-half years, more than 73 percent of claims originally challenged in IPR...more

Defendants’ Request For Stay Is Denied

The PTAB has not yet instituted the IPR petition. The deadline for decision on whether to institute the IPR petition is October 22, 2015. Delay in petitioning for IPR could create some tactical disadvantage to plaintiff and...more

IP Newsflash - June 2015 #2

DISTRICT COURT CASES - District Court Required Identification of Prior Art in Defendant’s Counterclaim of Invalidity - In the Southern District of New York, the court granted plaintiff’s motion to dismiss...more

Need to Establish Criticality of Claimed Range to Avoid Anticipation by Broader, Overlapping Range - Ineos USA LLC v. Berry...

Addressing anticipation under pre-AIA § 102 in the context of a claimed numerical range and prior art disclosing a broader, overlapping range, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s summary...more

When You Don’t Know What You Know: The Role of Unappreciated Inherency in the Obviousness Analysis

The patent statute makes it clear that subject matter that would have been obvious to one of ordinary skill in the art as of the effective filing date of a patent application is not patentable.[1] The considerations relevant...more

PTAB: We Are Disinclined to Acquiesce to Your Rehearing Request - Conopco Inc. dba Unilever, v. The Procter & Gamble Company

In a decision denying rehearing of the order denying institution of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) explained the factors it considers in making institution decisions based on...more

Federal Circuit Review | May 2015

Overly Narrow Statement Of Problem Can Show Reliance On Hindsight - In INSITE VISION INCORPORATED v. SANDOZ, INC., Appeal No. 2014-1065, the Federal Circuit held that enunciating an overly narrow statement of the problem...more

Nearly Expired Is Not the Same as Expired: The Board Clarifies Claim Construction Standards for Inter Partes Review - Apple, Inc....

Addressing the standard to be applied for claim construction during inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) declined to create an...more

Intellectual Property Alert: Apple v. Samsung: The Federal Circuit Clarifies Design Patent Principles Law

In a much anticipated opinion issued by the U.S. Court of Appeals for the Federal Circuit in Apple v. Samsung on May 18, the design patent law with respect to remedies and the infringement test remains robust. Notably, and...more

Patent Owner Must Produce Documents That Are Inconsistent with Its Positions

In IPR2014-00727, Petitioner C&D Zodiac, Inc. seeks review of U.S. Patent No. 8,590,838 owned by B/E Aerospace, Inc. The '838 patent relates to a "spacewall" lavatory. In connection with the IPR proceeding, the Petitioner...more

The PTAB Explores Estoppel in New Representative Decision

The Patent Trial and Appeal Board (PTAB) recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of...more

IP Newsflash - May 2015 #2

SUPREME COURT CASES - U.S. Supreme Court Remands Case to Federal Circuit to Review Patent Under Teva - On April 20, 2015, the U.S. Supreme Court remanded a case back to the U.S. Court of Appeal for the Federal...more

PTAB Estops Follow-On Petition for Inter Partes Review Based New Combinations of Prior Art Raised in Earlier Petition

Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549, Paper 10 (P.T.A.B. Mar. 26, 2015) - The Board recently added a decision denying inter partes review in Dell, Inc. v. Electronics &...more

AstraZeneca LP v. Breath Ltd.

Case Name: AstraZeneca LP v. Breath Ltd., Civ. No. 08-1512 (RMB/AMD), 2015 U.S. Dist. LEXIS 17687 (D.N.J. Feb. 13, 2015) (Bumb, J.). Drug Product and Patent(s)-in-Suit: Pulmicort Respules® (budesonide inhalation...more

No More Soup For You – PTAB Rejects Second IPR Petition Under 35 U.S.C. § 325(d)

The Patent Trial and Appeal Board recently denied an IPR petition under 35 U.S.C. § 325(d) because the petitioner’s arguments were substantially similar to those it made in an earlier IPR petition. Both petitions involved...more

Anticipation Found Even Where the Prior Art Did Not Disclose Limitations Arranged the Same Way as in the Claim - Kennametal, Inc....

Applying the substantial evidence standard to support an invalidity determination by the Patent Trial and Appeal Board (PTAB or Board), the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB’s decision with...more

Cooling Off Defendant’s Obviousness Case

Findings of Fact and Conclusions of Law; Order Entering Judgment for Plaintiff, Asetek Danmark A/S v. CMI USA, Inc., Case No. 13-cv-00457-JST (Judge Jon S. Tigar) - Questions of obviousness can present some of the most...more

Warner Chilcott Co., LLC v. Teva Pharms. USA, Inc.

Case Name: Warner Chilcott Co., LLC v. Teva Pharms. USA, Inc., Civ. No. 11-6936 (FSH), 2015 U.S. Dist. LEXIS 26207 (D.N.J. Mar. 4, 2015) (Hochberg, J.). Drug Product and Patent(s)-in-Suit: Atelvia® (risedronate /...more

Federal Circuit Review | April 2015

No Recovery Of Lost Profits From Related Companies’ Activities - In WARSAW ORTHOPEDIC, INC. v. NUVASIVE, INC., Appeal Nos. 2013-1576, -1577, the Federal Circuit held that a company was not entitled to lost profits based...more

Does the AIA Have a Prior Art Exception You Can Use?

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published. Thus, it is a good time for applicants to consider...more

Senju Pharm. Co., Ltd. v. Lupin Ltd.

Case Name: Senju Pharm. Co., Ltd. v. Lupin Ltd., 2013-1630, 2015 U.S. App. LEXIS 4541 (Fed. Cir. Mar. 20, 2015) (Circuit Judges Newman, Plager, and Moore presiding; Opinion by Plager, J.; Dissent by Newman, J.) (Appeal from...more

Is The Deck Stacked Against Patent Owners In The PTAB? [Video]

Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

Toward a Bullet-Proof Petition – Motivation to Combine

While 8 out of 10 Petitions seeking inter partes review are granted by the PTAB, there remain several key errors that unsuccessful Petitioners make. Among them is the failure to provide sufficient factual basis for a...more

Prior Art Must Criticize or Otherwise Disparage the Claimed Solution to Constitute a Teaching Away - PNY Techs., Inc., v. Phison...

Addressing the question of whether claims covering a particular type of USB plug would have been obvious, the Patent Trial and Appeal Board (PTAB or Board) found the claims to be unpatentable, concluding that while one...more

Antedating by Third-Party Reduction to Practice Not Enough—Conception Needed - Sensio, Inc. v. Select Brands, Inc.

In its decision to institute an inter partes review (IPR) of a design patent related to a slow cooker buffet server, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) ruled that the...more

259 Results
|
View per page
Page: of 11

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×