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Inter Partes Review (IPR) Proceeding Prior Art Today's Popular Updates

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

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SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

Knobbe Martens

Analogous Art Must Be Compared to the Challenged Patent

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In Sanofi-Aventis Deutschland GmbH v. Mylan Pharm. Inc., Case No. 2021-1981, the Federal Circuit reversed an obviousness determination by the PTAB. At issue was Sanofi’s reissued U.S. Patent No. RE47,614 (the ’614 patent),...more

Knobbe Martens

Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation

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M & K HOLDINGS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Moore, Bryson, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: Title-searchable publications shared on a prominent standards-setting...more

Knobbe Martens

It’s a Date – Twitter Reply Proves Prior Art Publication Date

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VIDSTREAM LLC V. TWITTER, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be...more

Knobbe Martens

Federal Circuit Review - September 2020

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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

Troutman Pepper Locke

Federal Circuit Review - Issue 274

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274-1 Federal Circuit Revisits American Axle & Manufacturing; Case Remanded to Determine if One of the “Hooke’s Law” Claims is Ineligible under Other Theories of Eligibility - The Federal Circuit recently issued a modified...more

Knobbe Martens

Federal Circuit Review - June 2020

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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

McDermott Will & Emery

Special Report - 2019 IP Law Year in Review - Patents

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2019 was another milestone year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that will affect your company’s litigation, patent prosecution or...more

Mintz - Intellectual Property Viewpoints

PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of...

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up – August 2019

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This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases....more

McDonnell Boehnen Hulbert & Berghoff LLP

Mayne Pharma Int'l v. Merck Sharp & Dohme Corp. (Fed. Cir. 2019)

The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this...more

Mintz - Intellectual Property Viewpoints

Collateral Estoppel Bars Assertion of Patent Claims That Do Not “Materially Alter the Question of Invalidity” Relative to Claims...

On April 4, 2019, Chief Judge Patti Saris of the United States District Court for the District of Massachusetts held in Intellectual Ventures I, LLC v. Lenovo Group Ltd. that a final determination of invalidity in inter...more

Troutman Pepper Locke

Why Biotech and Pharma Patents Survive IPR

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When the America Invents Act of 2011 ushered in a number of new administrative procedures for challenging issued patents, the biotechnology and pharmaceutical industries at first seemed largely unconcerned. Originally...more

McDermott Will & Emery

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

McDermott Will & Emery

PTAB Reverses Obviousness Finding After Remand

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The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB...more

Mintz - Intellectual Property Viewpoints

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Knobbe Martens

Federal Circuit Review | October 2016

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Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

McDermott Will & Emery

Obviousness Inquiry Allows Flexibility in Considering Teachings of Prior Art

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Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit affirmed a finding of obviousness based on a flexible approach and further clarified the appropriate evaluation of secondary considerations...more

BakerHostetler

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

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Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more

Fish & Richardson

Use of the Wayback Machine in IPR Is Under Attack

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One source of prior art commonly relied on in inter partes review proceedings is the “Wayback Machine.” The Wayback Machine is an internet archive of webpages that are browsed by crawler programs and then stored and preserved...more

Troutman Pepper Locke

Substituting Claims During IPRs: Nike v. Adidas May Give Patent Owners Renewed Hope

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Patent owners continue to express frustration at the inability to amend claims during inter partes review proceedings (IPRs). IPRs are patent validity challenges conducted at the U.S. Patent Office’s Patent Trial and Appeals...more

McDermott Will & Emery

A Kinder, Gentler PTAB Allows Claim Amendments - REG Synthetic Fuels LLC v. Neste Oil Oyj

In a final written decision, the Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner that the original challenged claims were unpatentable but at the same time granted the patent owner’s motion to amend,...more

Robins Kaplan LLP

Is The Deck Stacked Against Patent Owners In The PTAB?

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Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

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