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

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No....more

Petitioners that Rely on Deposition Testimony to Establish that a Publication Qualifies as Prior Art should be Prepared to Produce...

Routine discovery in review proceedings authorizes cross examination of affidavit testimony. 37 C.F.R. § 42.51(b)(1). If a petitioner submits affidavit testimony to prove that a publication qualifies as prior art, the...more

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

PTAB Denies IPR Petitions against Cold Spring Harbor Laboratory Patents

Cold Spring Harbor Laboratory (CSHL) is a storied institution in molecular biology, being the site of annual meetings related to this view of life since Schrodinger proposed to use quantitative methods to examine biology in...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

Summary Judgment and Daubert motions are decided

Robinson, J. Defendant’s motions for summary judgment of invalidity under sections 101, 102(b), and 103 are denied; defendant’s motion barring pre-suit damages based on laches is denied; defendant’s motion for summary...more

What "Reasonably" Could Have Been Raised in an Inter Partes Review?

Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore,...more

BRI Should Not Depart from What the Claim Language and Specification so Clearly Mean

In Pride Mobility Products Corporation v, Permobil, Inc., [2015-1585, -1586] (April 5, 2016), the Federal Circuit reversed the PTAB’s construction and cancellation of claim 7, but affirmed cancellation of all the other claims...more

Federal Circuit Recognizes an Exception to Inter Partes Review Estoppel Provisions

On March 23, the US Court of Appeals for the Federal Circuit issued a decision endorsing an exception to the estoppel provisions for inter partes review (IPR) under 35 U.S.C § 315(e). Shaw Industry Group, Inc. v. Automated...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

Second Time Is The Charm For Kyle Bass Challenges Of Ampyra Patents

The USPTO Patent Trial and Appeal Board (PTAB) has decided to institute inter partes review (IPR) proceedings against the Ampyra patents based on the second set of petitions filed by Kyle Bass and the Coalition for Affordable...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

The role of evidence in inter partes review

From denying a famous hedge fund manager’s IPR petitions to upholding all claims at final written decision, evidentiary issues alone have decided some PTAB trial proceedings. Even with such impressive results, evidentiary...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

Federal Circuit Remands PTAB’s Denial of Motion to Amend in IPR - Nike, Inc. v. Adidas AG

Addressing a decision by the Patent Trial and Appeal Board (PTAB or Board) denying a motion to amend claims under inter partes review (IPR), the US Court of Appeals for the Federal Circuit remanded the matter to the Board for...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

Sometimes the Application of a New Technology is Obvious from the New Technology itself

In In re Cree, [2015-1365] (March 21, 2016), the Federal Circuit affirmed the decision of the PTAB in an ex parte reexamination that the claims directed to the production of white light through the “down-conversion” of blue...more

IP Newsflash - March 2016 #4

SUPREME COURT CASES - Sequenom Seeks Supreme Court Review of Diagnostic Claims Held Invalid Under § 101 - On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa...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

If You Can’t Say Something Nice . . .

In Bamberg v. Dalvey, [2015-1548] (March 9, 2016), the Federal Circuit affirmed the PTAB’s decision in an appeal from a consolidated interference proceeding refusing to allow the claims of four patent applications because the...more

N.D. Ill. Decision Defines the Scope of Estoppel Arising Out of an Inter Partes Review

On March 18, 2016, Judge Lefkow of the U.S. District Court for the Northern District of Illinois held that the estoppel provision of 35 U.S.C. § 315(e)(2) does not extend to prior art that was not reasonably available during...more

A legal look at Patent Trial and Appeal Board decisions and trends: Inherent Disclosure Argument Successful in Inter Partes Review

A vast majority of the time, petitioners in USPTO post-grant proceedings attempt to show invalidity of challenged claims by showing the prior art explicitly discloses all limitations of the claims. A petitioner in a recent...more

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