Last week marked the first time that USPTO Director Vidal acted under the Revised Interim Director Review Process to order a Delegated Rehearing Panel to review a decision denying institution of inter partes review (IPR). In...more
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the...more
Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more
The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant). In this post, we take a look back at how the Court closed out 2021 and...more
In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and...more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review (IPR), in part because an allegedly anticipatory prior art patent lacked an element of what the board determined was a limiting...more
The legal concept of obviousness is tricky. A claimed invention is found obvious if the prior art teaches or suggests all claim limitations and one of ordinary skill in the art would have been motivated to combine the...more
In Trustees of Columbia University v. Illumina, Inc., the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeals Board (“PTAB” or “Board”) decision to invalidate five patents owned by Columbia,...more
In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24,...more
Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition's application of KSR when asserting motivation to combine for an obviousness analysis. The Patent...more
Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds - In Network-1 Technologies, Inc. v. Hewlett-Packard Company, Hewlett Packard Enterprise Company , Appeal No. 18-2338, the Federal Circuit held that a party...more
ST. JUDE MEDICAL, LLC v. SNYDERS HEART VALVE LLC - Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The broadest reasonable interpretation of a claim must be considered in...more
Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more
The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
The PTAB’s recent decision in TicketNetwork, Inc. v. CEATS, Inc. reminds litigants that collateral estoppel only applies when there is an identity of issues. In the decision, the PTAB refused to find that a claim limitation...more
PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more
Recently, the Federal Circuit breathed life, again, into U.S. Patent No. 7,802,310 (the ’310 patent), which is the subject of one of the longest running inter partes review (IPR) proceedings. In Pers. Web Techs., LLC v....more
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products,...more
Before Moore, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The mere fact that a certain thing may result from a given set of circumstances is not sufficient to demonstrate inherency. Instead,...more
Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more
On July 13, 2018, the Federal Circuit reversed the PTAB’s finding that claims 1-5 and 11 of U.S. Patent No. 8,651,118 (“the ’118 Patent”) are anticipated.by U.S. Patent No. 4,148,330 (“Gnaga”) and Japanese Application No....more
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., Appeal Nos. 2016-2616, -2656 (Fed. Cir. May 16, 2018) - In an appeal from a inter partes review, the Federal Circuit reviewed a PTAB obviousness...more
Paice LLC, The Abell Foundation, Inc., v. Ford Motor Company (Fed. Cir. Feb. 1, 2018) - In Paice LLC, The Abell Foundation, Inc. v. Ford Motor Company, the Federal Circuit vacated the Patent Trial and Appeal Board’s...more
In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more