Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more
4/28/2025
/ Apple ,
Claim Construction ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more
4/9/2025
/ America Invents Act ,
Claim Construction ,
Disclosure Requirements ,
Filing Deadlines ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Provisional Applications ,
Roku
The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more
Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more
The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more
3/10/2025
/ Appeals ,
Article III ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
2/25/2025
/ Appeals ,
Enablement Inquiries ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims....more
2/7/2025
/ Biotechnology ,
Healthcare ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Likelihood of Success ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more
The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more
Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more
6/20/2024
/ Design Patent ,
Examiners ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more
5/10/2024
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Vacated
The USPTO is seeking public input on whether prior art must be authored by humans and how, if at all, AI-generated disclosures should be treated differently from non-AI generated disclosures....more
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. See...more
In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more
In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable, even though the PTAB decision...more
11/10/2023
/ Evidentiary Standards ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
10/27/2023
/ Estoppel ,
Final Written Decisions ,
Gaming ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Interference Claims ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art ,
Software ,
USPTO ,
Zynga
On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings. ...more
Patent Owner, IP Bridge, filed a patent infringement suit against Petitioner, Ericsson, for infringement of seven of its patents directed at radio communication between a base station and a mobile station and related...more
On November 30, the PTAB entered its final written decision in Unified Patents, LLC v. 2BCom, LLC on the patentability of the claims of U.S. Patent No. 7,127,210 (the ‘210 patent).
...more
The estoppel statute precludes a defendant who has challenged a claim in an IPR reaching final written decision from later challenging that claim on any ground that it raised or reasonably could have raised during the IPR...more
One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1,...more
The PTAB and District Courts do not always see eye to eye when it comes to prior art. On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which...more
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more
2/19/2020
/ Final Written Decisions ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Samsung ,
Section 112
On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system...more