Now that the new year has started, we’re seeing an uptick in precedential opinions. This week we decided to turn back to patent appeals, taking a look at IPRs and Article III—always a fun topic. Below we provide our usual...more
FANDUEL, INC. v. INTERACTIVE GAMES LLC - Before Dyk, Moore, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: The Board does not violate the Administrative Procedure Act (APA) if it institutes trial...more
DuPont petitioned for inter partes review of Synvina’s patent, which was directed to a method of oxidizing a chemical using a specific temperature range, pressure range, catalyst, and solvent. The prior art disclosed the...more
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
IPR Petitioner’s Initial Identification of the Real Parties in Interest Is to Be Accepted Unless and Until Disputed by a Patent Owner - In Worlds Inc. v. Bungie, Inc., Appeal Nos. 2017-1481, -1546, -1583, the Federal...more
A recent Federal Circuit decision (DuPont v. Synvina) addressed two key issues in PTAB proceedings: burden shifting and standing to appeal....more
Assertions of obviousness based on prior art references in combination with “routine optimization” by one skilled in the art are common in the chemical and biological fields. The Federal Circuit recently addressed this issue...more
The Federal Circuit issued the fifth precedential decision involving the one year time-bar 35 U.S.C. § 315(b) since the issue became reviewable earlier this year in the wake of Wi-Fi One....more
Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit....more
Federal Circuit Summary - Before Lourie, O’Malley, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior...more
Federal Circuit Summary - Before Prost, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB may initially accept an IPR petitioner’s identification of real-parties-in-interest, but...more
As first discussed with the 50+ participants at the inaugural Global IP Strategy Conference held at our firm’s offices on Friday March 9, 2018, the Federal Circuit’s October en banc decision in Aqua Products Inc. v. Matal...more
In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more
Federal Circuit Summaries - Before NEWMAN, CHEN, and HUGHES. Appeal from the Patent Trial and Appeal Board. Summary: In inter partes review, the patent challenger bears the burden of proving that proposed amended...more
The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more
In an en banc decision, the Federal Circuit in Aqua Products, Inc. v. Matal addressed the question of who bears the burden of proving that claims amended during inter partes review ("IPR") proceedings are or are not...more
The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for...more
The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more
The recent decisions of the USPTO Patent Trial and Appeal Board (PTAB) granting Celgene’s requests for rehearing in parallel Inter Partes Review proceedings brought by Kyle Bass’s Coalition for Affordable Drugs (CFAD) are...more
In Nidec v. Zhongshan, the entire panel affirms a determination of obviousness but two judges question whether § 315(c) of the AIA was improperly used to permit joinder as to a second Zhongshan petition filed after the...more
In Honeywell v. Mexichem the Circuit vacates a Board determination of obviousness, ruling that the Board improperly relied on inherency, appeared to shift the burden of nonobviousness to the patentee, and violated the APA by...more
On March 3, 2017, in a final written decision in IPR2015-01838, the PTAB rejected an obviousness challenge brought by DuPont against a patent owned by Furanix Technologies B. V. directed to methods for preparing the known...more
As reported in our February 1, 2017 post, patent owners have had a difficult time convincing the PTAB that secondary considerations are sufficient to overcome a prima facie case of obviousness. The Crown Packaging decision,...more
Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more
On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more