Patents Prior Art

News & Analysis as of

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

IPR Incorporation by Reference Argument Not Enough to Save Priority Claim

Many patent challengers have found “incorporation by reference” arguments to be a tempting way to try to convert an obviousness argument into an anticipation argument, but “incorporation by reference” can also impact whether...more

Use Belt and Suspenders; Backup Anticipation with Obviousness - Dell Inc. v. Elecs. & Telecomms. Research Inst.

Addressing the issue of anticipation in the context of an inter partes review (IPR), the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (Board) rejected a petitioner’s anticipation challenge,...more

PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art

The fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v....more

Recent IPR Guidance From a Trio of Forums

As inter partes review (IPR) practice continues to develop and practitioners feel their way around the edges, the last month brought helpful guidance from a trio of forums: the Federal Circuit, the Central District of...more

PTAB Excludes Documents Corroborating Publication Date as Hearsay but Admits Librarian Testimony - Toyota Motor Corporation v....

In a final written decision, the U. S. Patent and Trademark Office Patent (PTO) Trial and Appeal Board (PTAB or Board) granted in part the patent owner’s motion to exclude certain documents purporting to corroborate the...more

Teaching Away Arguments Fail to Gain Traction with PTAB

A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this...more

Would Have Been Obvious to Combine Prior Art that Mentions an Object with Standard Textbook that Describes that Object - Intel...

Addressing the merits in an inter partes review of a patent for improved computer graphics calculations, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (Board) found all challenged claims unpatentable. ...more

Petitioners Cannot Respond to Substantive Issue Raised in Preliminary Response - VTech, Inc. v. Spherix Inc.

Addressing whether a petitioner in an inter partes review (IPR) can respond to a patent owner’s preliminary response, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied the...more

Motion to Exclude is Proper Vehicle in IPR to Remove Reference as Evidence

Patent Owners have often made the argument that certain art of record in an inter partes review is not actually prior art. The proper way to remove that evidence from the record is via a Motion to Exclude, not merely by...more

POSITA Motivated to Pursue Clinical Development of Therapy Disclosed in Prior Art Despite Potential Safety and Efficacy Hurdles

The PTAB recently held that the challenged claims in two patents assigned to Genzyme and one patent assigned to Duke University on methods for treating Pompe disease are invalid. ...more

Another IPR Petition Comes Up Short for Failing to Adequately Show Rationale to Combine

Many Patent Owners are finding success in undermining the challenge grounds of a Petition by arguing that the Petition fails to make an adequate showing that a person of ordinary skill in the art would have combined the...more

Wireless Does Not Mean “Without Wires”; “Streaming Video” Does Not Mean Emailing a Video File - In re Kevin R. Imes

Reviewing a final written decision of U.S. Patent Trial and Appeal Board (PTAB or Board), finding application claims unpatentable, the U.S. Court of Appeals for the Federal Circuit held that the Board erred in concluding that...more

Pfizer Inc. v. Mylan Pharms. Inc.

Case Name: Pfizer Inc. v. Mylan Pharms. Inc., Civ. No. 10-528-GMS, 2014 U.S. Dist. LEXIS 150283 (D. Del. Oct. 22, 2014) (Sleet, J.) (When a POSA would have to undertake significant guesswork to vary the parameters of...more

Combinations of Predictable Elements from the Prior Art Need Not Be Advantageous - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.

Addressing the propriety of combining prior art in an obviousness analysis, U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (“PTAB” or “Board”) determined that a patent for a spinal implant for...more

Pharmaceutical Patent Score a Win - Amneal Pharms., LLC v. Supernus Pharms., Inc.

In three separate but related final written decisions in the first successful defense of a pharmaceutical patent in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board...more

Proving Inherent Anticipation – Make or Break Your Case With Expert Testimony

Anticipation is a basic concept in patent law. On its face the concept is simple—if a single prior art reference teaches every element of a claim in the proper context, then the claim is not patentable, i.e., it is...more

Supplementing Information - Post-Institution Pacific Market International, LLC v. Ignite USA, LLC

Addressing a motion to submit supplemental information after institution, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) granted the motion, finding that the information—a supplemental...more

District Court Action Dismissed Without Prejudice Does Not Bar Filing of IPR Petition - Nautique Boat Co., Inc. v. Malibu Boats,...

Addressing whether a district court action dismissed without prejudice bars a filing of an inter partes review (IPR) petition under 35 U.S.C. § 315(a)(1), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal...more

PTAB Warns Patent Owner that Not Participating Will Result in Adverse Judgment - Shire Dev. LLC v. LCS Group, LLC

Faced for the first time with a patent owner unwilling to participate in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) permitted the filing of a paper...more

CBM Review Based on New Combinations of Prior Art - eBay Inc., v. Moneycat LTD.

Addressing an alleged abuse of discretion asserted by a patent owner in instituting a covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) concluded...more

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

Case Name: Warner Chilcott Co, LLC v. Teva Pharms. USA, Inc., Nos. 2014-1439, 2014-1441, 2014-1444, 2014-1445, 2014-1446, 2014 U.S. App. LEXIS 21946 (Fed. Cir. Nov. 18, 2014) (Circuit Judges Lourie, Reyna and Taranto...more

Court Rules PTAB Decision to Institute AIA Review Is Final, Cannot be Appealed

In the first-ever ruling in an appeal of an American Invents Act review decision, the Federal Circuit Court of Appeals affirmed last week that a speed limit indicator patent is invalid. As an initial issue in the decision on...more

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