Volvo Penta appealed from a Board decision finding all of its claims unpatentable as obvious. The claims at issue covered a tractor-type stern drive for a boat. Volvo Penta raised three main issues on appeal, arguing (1) that...more
[co-author: Jamie Dohopolski]
Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
2/9/2022
/ § 314(d) ,
35 U.S.C. §315(e)(1) ,
Absolute Intervening Rights Doctrine ,
Abuse of Discretion ,
Administrative Patent Judges ,
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America Invents Act ,
Appeals ,
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Executive Branch ,
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Forum Selection ,
FRCP 52(c) ,
GATT ,
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Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Intervening Acts ,
Inventions ,
Issue Preclusion ,
Judicial Review ,
Lack of Authority ,
Lack of Jurisdiction ,
Likelihood of Success ,
Minerva Surgical Inc. v Hologic Inc. ,
Motion for Summary Judgment ,
Motivation to Combine ,
Nexus ,
Non-Disclosure Agreement ,
Nonobvious ,
Obviousness ,
Ornamental Design ,
Parallel Proceedings ,
Patent Applications ,
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United States v Arthrex Inc ,
USPTO ,
Vacated ,
Writ of Mandamus
As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
As PTAB practitioners know, statistics on successful motions to amend are quite dismal. But in a recent case, the PTAB shed light on what may be a successful strategy for patent owners to amend their claims in an Inter Partes...more
1/3/2020
/ Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Nexus ,
Nonobvious ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
Experienced PTAB practitioners know that, in an IPR, assuming each claim element is in the asserted prior art, the rubber meets the road on the reason-to-combine arguments. In Henny Penny Corp. v. Frymaster, LLC, the Federal...more
10/4/2019
/ Alternative Pleadings ,
America Invents Act ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Nonobvious ,
Obviousness ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Responsive Pleadings