Patents Prior Art Appeals

News & Analysis as of

Just Because One Could Doesn’t Mean One Would

In Personal Web Technologies, LLC v. Apple, Inc., [2016-1174] (February 14, 2017), the Federal Circuit affirmed the Board’s claim construction but vacated the Board’s obviousness determination because the Board did not...more

Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of...more

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional...

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were invalid on the grounds of...more

You’re So Vague: Federal Circuit Sends IPR Decision Back to PTAB for More Thorough Analysis

In a precedential decision, the Federal Circuit reaffirmed that the Patent Trial and Appeal’s Board (PTAB) is required to explicitly state motivations to combine prior-art references in claim rejections for obviousness. ...more

Court Rejects Theory Of Derivation Based On FDA Requirement

The Federal Circuit decision in Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC may be more interesting for what Mylan argued than for what the Federal Circuit decided. However, it could be an important decision...more

In re Schweickert (Fed. Cir. 2017)

USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose - In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from...more

Inherent Anticipation for Biotechnology Inventions

Anticipation by inherent disclosure requires that a single prior art reference necessarily includes the unstated limitation. The unpredictable nature of biological processes means that winning summary judgment of invalidity...more

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering...more

Unreasonable Claim Construction Causes PTAB Reversal

In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB recently in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining...more

Invention Must Inevitably Result to be Anticipated by Inherency

In U.S. Water Services, Inc., v. Novozymes A/S, [2015-1950, 2015-1967] (December 15, 2016), the Federal Circuit vacated summary judgment of anticipation and affirmed the denial of summary judgment of no inequitable conduct....more

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness. In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged...more

If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm

In re Nuvasive, Inc., [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of U.S. Patent No. 8,361,156 invalid for obviousness. The Federal Circuit found that Nuvasive...more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger — just the opposite of what is usually seen in district court litigation. The narrowing...more

Three Point Shot - November 2016

Who's First in Ownership of the "Sweet Spot" Remains Unclear - Baseball is often called a "game of inches," whether one is describing the strike zone, a close play at the plate, or a liner past third base that just kicks...more

Federal Circuit Review | October 2016

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Claim Construction Disputes Should Be Affirmatively and Formally Raised

Addressing the preservation of claim construction disputes for appeal and issues of divided infringement, the US Court of Appeals for the Federal Circuit affirmed the district court, explaining that O2 Micro only requires the...more

Obviousness Inquiry Allows Flexibility in Considering Teachings of Prior Art

Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit affirmed a finding of obviousness based on a flexible approach and further clarified the appropriate evaluation of secondary considerations...more

Case shows ever-changing nature of patent law

The America Invents Act (AIA), passed almost five years ago, continues to substantially change patent law in the United States — and questions about the law’s effects are still being litigated. One important question...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

Federal Circuit Relies on Robust Disclosure to Save Priority Date

On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written...more

PTAB Rejects Consideration of New Issues on Remand

Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand....more

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