Patents Prior Art

News & Analysis as of

A Non-illusory Opportunity to Amend

The Patent Trial and Appeal Board ("Board") recently granted a motion to amend. A successful motion to amend is rare; only six have been granted to date. The case is Shinn Fu Co. of America Inc. et al. v. The Tire Hanger...more

Estoppel is Not Invoked Simply Because Prior Art is Cumulative

After an Inter Partes Review (IPR) at the United Stated Patent and Trademark Office (USPTO) is completed, validity and/or infringement of the patent may subsequently be determined by a U.S. district court. This situation...more

Unenforceability Due to Client Failure to Correct Counsel’s Misrepresentations to PTO - The Ohio Willow Wood Company v. Alps...

In the ongoing saga between two manufacturers of liners for prosthetic limbs, the US Court of Appeals for the Federal Circuit confirmed a finding of inequitable conduct committed by the patent owner while the patent at issue...more

Federal Circuit Carves Out Exception to IPR Estoppel Provisions

The Federal Circuit recently held that petitioners will not be estopped from raising in subsequent proceedings any noninstituted grounds deemed “redundant” by the Board or otherwise denied without meritorious consideration....more

TriVascular, Inc. v. Samuels (Fed. Cir. 2016)

Early last month, the Federal Circuit addressed an important question regarding the interplay between a decision to institute inter partes review before the Patent Trial and Appeal Board and the ultimate determination by the...more

Decision to Institute IPR Need Not Be Binary - Synopsys, Inc. v. Mentor Graphics Corp.

Addressing whether the Patent Trial and Appeal Board (PTAB or Board) may institute inter partes review (IPR) with respect to some but not all of the claims challenged in a petition, the US Court of Appeals for the Federal...more

Purdue Pharma L.P. v. Depomed, Inc. (Fed. Cir. 2016)

Last Thursday, the Federal Circuit handed down its non-precedential decision in Purdue Pharma v. Depomed, reviewing the decision of the Patent Trial and Appeal Board on three related inter partes reviews. While not quite a...more

Federal Circuit Review | March 2016

Under O2 Micro, a District Court Must Provide a Claim Construction if the Parties Dispute the Meaning of a Claim Term - In Eon Corp. IP Holdings LLC v. Silver Springs Networks, Inc., Appeal No. 2015-1237, the Federal...more

Federal Circuit Tosses PTAB Decision

The Federal Circuit vacates a decision by the PTAB for relying on facts raised for the first time at oral argument. Executive Summary - On March 15, 2016, the US Court of Appeals for the Federal Circuit vacated...more

No Mention Of Damages Is Permitted During Liability Phase Of Trial

Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more

Method of Treatment Claims Cancelled in View of Prior Art under Theory of Obviousness, but Not Anticipation - Eli Lilly and Co. v....

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) found all of Los Angeles Biomedical Research Institute’s (LA-Bio Med) patent claims unpatentable on the basis of obviousness in view of a...more

Expected Toxicity of Claimed Immunoconjugates Thwarts Showing of Prima Facie Obviousness (Phigenix, Inc. v. Immunogen, Inc.,...

In an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (Board) upheld the patentability of Phigenix’s patent claims that were challenged on the basis of obviousness. Phigenix, Inc. v. Immunogen, Inc.,...more

No Institution Based Solely on Unsupported Expert Testimony (Johns Manville Corporation v. Knauf Insulation Inc.)

Addressing whether a petitioner’s unsupported expert testimony, unchallenged by the patent owner, is sufficient to carry an inter partes review (IPR) petition at least through the institution phase, the Patent Trial and...more

Species Claims Invalidated by Genus Prior Art and a Lack of Secondary Indicia of Non-Obviousness (Prometheus Laboratories, Inc. v....

The U.S. Court of Appeals for the Federal Circuit upheld the U.S. District Court for the District of New Jersey’s finding of patent invalidity on the basis of obviousness, but did not reach the issue of invalidity due to...more

Federal Circuit Review | February 2016

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more

In the Wake of Dynamic Drinkware, PTAB Rejects Prior Art Due to Petitioner’s Failure to Establish Earlier Priority Dates (VMware,...

Addressing the burden-shifting requirements for establishing priority of prior art references, the Patent Trial and Appeal Board (PTAB or Board) recently issued two decisions finding that the petitioners failed to meet their...more

In Obviousness Analysis Loss of Benefit Is Not the Same as Inoperable (In re Urbanski)

Addressing “teaching away” arguments in the context of obviousness issues, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) obviousness decision, holding a person...more

Blog: Using Continuation Applications Strategically

Continuation applications are wonderful tools for increasing the size and scope of your patent portfolio. With some careful planning, you can use continuation applications to turn your experience with the patent office and...more

GUEST POST: David Lisch on the Basics of Intellectual Property Law for Start-Ups (Part 2-Patents)

A patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” 35 U.S.C. § 101. Unlike trademarks, which protect a brand name and recognition, a...more

Making the Obvious Point: How Failing to Provide Motivation to Modify a Prior Art Reference Can Lose Your Case, Even When That...

To invalidate a patent as obvious, a prior art reference often must be modified to incorporate the teachings of another prior art reference. However, the Supreme Court has held that the obviousness analysis must include some...more

It Can Happen: PTAB Alters Final Written Decision on Rehearing - Square, Inc. v. REM Holdings 3, LLC

In a rare decision granting a petitioner’s rehearing request, the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier position in a final written decision where it found that the petitioner had not shown that...more

Directing a Known Treatment to a Sub-Population of Patients Is Obvious - Prometheus Labs, Inc. v. Roxane Labs., Inc.

Addressing obviousness issues, the U. S. Court of Appeals for the Federal Circuit affirmed the district court’s invalidity conclusion, agreeing that the elements present in the prior art—including earlier disclosed genus...more

Patent Owner Should Have Left “Good Enough” Alone - Belden Inc. v. Berk-Tek LLC

Addressing issues of obviousness and procedural issues related to the use of declarations, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a decision by the Patent Trial and Appeal...more

Federal Circuit Review | December 2015

Expert Testimony Not Always Necessary to Establish Prima Facie Obviousness Case in Inter Partes Review - In Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, 2014-1576, on appeal from an IPR, the Federal Circuit...more

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

After filing a first post-grant proceeding, whether an inter partes review, a covered business method proceeding or a post-grant review petition challenging certain claims of a patent, the same petitioner may decide to file a...more

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