Patent Trial and Appeal Board

News & Analysis as of

Patent Trial and Appeal Board Rejects Petitions for Covered Business Method Patent Review of Orange Book-Listed Patents Claiming...

On January 13, 2015, the Patent Trial and Appeal Board (PTAB) denied institution of four Covered Business Method (CBM) patent reviews of Orange Book-listed patents owned by Jazz Pharmaceuticals plc (“Jazz”), holding that the...more

Inter Partes Review Requested for MiMedx Tissue Graft Patent

Tissue Transplant Technology Ltd. and Human Biologics of Texas Ltd. (“the Petitioners”) recently filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 8,597,687 (“the ’687...more

Obviousness Post KSR

On April 30, 2007 in KSR v Teleflex, the Supreme Court reaffirmed its view expressed many years ago that patents should not be granted for inventions that had too low a level of inventivity. As Justice Kennedy in a unanimous...more

IP Newsflash - January 2015 #2

DISTRICT COURT CASES - District Court Opinion Underscores Importance of Careful Drafting of Settlement Agreements - A recent opinion penned by Chief Judge James C. Dever of the Eastern District of North Carolina...more

PTAB Update -- No Institution of CBM Patent Review for Jazz's Orange-Book Listed Patents

On January 13, 2015, the Patent Trial and Appeal Board ("PTAB" or "Board") denied institution of four covered business method ("CBM") patent review petitions filed by Par Pharmaceutical, Inc. ("Par"), Roxane Laboratories,...more

Serial Objections to Evidence Are Not Required if Supplemental Evidence Is Filed and Served

American Honda Motor Co., Inc. v. American Vehicular Sciences LLC - The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) concluded that a party need not renew an objection to evidence if...more

Deposition of Declarants Is Limited after Routine Discovery

Valeo, Inc. v. Magna Electronics, Inc. - In an Order on Conduct of the Proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s request to depose a...more

Pro Se Not Welcome at PTAB

Shire Development LLC v. LCS Group, LLC - Denying a request from patent owner’s counsel to withdraw from an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board)...more

Navigating Degrees of Separation: Impermissible Incorporation by Reference

T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC - Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office’s Patent Trial...more

#Alicestorm: Patent Invalidations and USPTO Practice After Alice

The Pineapple Express storms that hit California last December were largest since January 2008.  The joke going around the Bay Area was that the first thing San Franciscans do when a big storm is coming is think up a new...more

Patent Owner Must Distinguish Universe of All Known Prior Art to Substitute a New Claim

Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc. - Detailing the requirements for amending claims in an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or...more

Same Prior Art May Be Considered Differently in Connection with Different Petitions

In re Petition for Inter Partes Review by Mitsubishi Plastics, Inc. - In a request for a rehearing of an earlier decision denying institution of inter partes review, the Patent Trial and Appeal Board (PTAB or Board)...more

PTAB Issues Rare Dissent in Non-Institution Decision

AOL Inc., et al. v. Coho Licensing LLC - In a decision denying institution of an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB or Board) decided that the...more

Prior Art Reference Does Not “Teach Away” if It Fails to Criticize, Disclaim or Discourage the Claimed Technique

Ultratec, Inc. v. CaptionCall, L.L.C. - Addressing the obviousness issue whether an asserted secondary reference impermissibly changes the principle of operation of a primary reference, the U.S. Patent and Trademark...more

PTAB Update -- The Board Grants Its Second Motion to Amend (At Least in Part)

For only the second time, the Patent Trial and Appeals Board ("PTAB" or "Board") granted a motion to amend claims. However, even though these two current motions were only granted-in-part, the fact that some claim amendments...more

Requests for Additional Discovery Governed by Garmin Factors

Seoul Semiconductor Co., Ltd., et al. v. Enplas Corp. - Addressing the issue of whether a patent owner’s motion for additional discovery was justified based on a newly-filed exhibit, the Patent Trial and Appeal Board...more

Identifying the Real Party in Interest

Samsung Elecs. Co. v. Black Hills Media, LLC; Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc. - Two recent decisions from the Patent Trial and Appeal Board (PTAB or Board) clarify the test for identifying the...more

Get Your Prior Art Ducks in a Row Before Filing Your Inter Partes Review Petition

National Environmental Products Ltd. v. Dri-Steem Corp.; PNC Bank National Ass’n v. Secure Axcess, LLC - In two recent decisions demonstrating that amending a petition for inter partes review (IPR) with supplemental...more

Post-Alice—Claims Directed to an Abstract Idea Must Have Meaningful Limitations

LinkedIn Corp. v. AVMarkets, Inc. - Addressing patent eligibility in a covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) concluded that...more

And Cats and Dogs Living Together . . .

Well perhaps not the mass hysteria that Dr. Venkman anticipated in Ghostbusters, but the granting of a motion to amend is still an unusual occurrence. However, in Riverbed Technology Inc. v. Silver Peak Systems, Inc.,...more

Dismissal Based on Petitioner's Prior DJ Action Cannot Be Waived

In a covered business method review filed by petitioner GTNX, Inc., the petitioner sought review of four patents owned by patent owner INTTRA, Inc. The PTAB instituted trial on all four patents following the patent owner's...more

Premature Motion to Stay Pending Inter Partes Review Denied Where Patent Trial and Appeal Board Had Not Yet Granted the Petition...

Reflectix, Inc., Innovative Insulation, Inc., TVM Building Products, Inc., Energy Efficient Solutions, LLC, and Home Depot U.S.A., Inc.'s (collectively, "Defendants") filed a motion to stay pending and Inter Partes Review...more

Petitioner Authorized to File Sanctions Motion Against Inventor

In Shire Development LLC, LCS Group, LLC, IPR2014-00739, Paper 14 (December 23, 2014), the Board authorized petitioner to file a motion for sanctions after the inventor Dr. Louis Sanfilippo, send an email in violation of the...more

Board Teaches Patent Owner About Precedent, and Petitioner About Showing Obviousness

Often times the best lessons are those learned at someone else’s expense. One such case is Valeo, Inc.v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014). The Patent Owner urged the Board to exercise its...more

PTAB Gives Guidance Regarding What Constitutes A Printed Publication

In an IPR petition filed by petitioner C&D Zodiac, Inc., the petitioner sought review of patent owner, B/E Aerospace, Inc.'s U.S. Patent No. 8,590,838, directed to space-saving aircraft enclosures, including lavatories,...more

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