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No Motivation to Combine May Not End the Obviousness Inquiry

In Polygroup Limited MCO v. Willis Electric Company, Ltd., the Federal Circuit reversed and remanded the PTAB’s findings of patentability in light of several obviousness arguments presented by the petitioner, concluding that...more

Unsupported Assertions: Expert’s Persuasive Authority Suffers Without Directly Engaging Claim Limitations

An expert asserting that a patent claim reciting different features than the prior art is nonetheless “equivalent” to the prior art must address and account for the recited limitations head-on, or otherwise lose persuasive...more

En Banc Federal Circuit Majority Rules Time-Bar Determinations By PTAB Are Appealable

In yesterday’s en banc decision in Wi-Fi One v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit addressed issues regarding judicial review of the PTAB’s time-bar...more

PTAB Issues Revised Procedure For Decisions Remanded From The Federal Circuit

On November 16, 2017, the PTAB announced its revised Standard Operating Procedure for decisions remanded from the Federal Circuit for further proceedings. In SOP 9, the PTAB provides guidance to panels and parties that...more

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more

Federal Circuit to PTAB – No 102 Gap Filling

In a precedential opinion dated March 14, 2017, the Federal Circuit reversed the PTAB, holding that in finding a claim anticipated under 35 USC § 102, the Board cannot “fill in missing limitations” simply because a skilled...more

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