Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast
Supreme Court Hands Landowners a Major Victory - Nossaman's Brad Kuhn
This decision addresses the PTAB’s secondary considerations analysis in an IPR Final Written Decision. Background - Appellant Yita sought inter partes review of two patents sharing a specification, both of which are...more
In Quanergy Systems, Inc. v. Velodyne Lidar USA, Inc.1, a Panel of the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) decisions that claims of a Velodyne patent were...more
In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
Campbell Soup Co. petitioned for inter partes review (IPR) of Gamon Plus, Inc.’s design patents D612,646 and D621,645. The Patent Trial and Appeal Board (Board) instituted the IPR and determined that Campbell Soup did not...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
Please join Troutman Pepper's Intellectual Property and Health Sciences Practice Group for the sixth installment of the podcast series focused on strategy, trends, and other happenings at the PTAB. In this episode, Maia...more
It’s No Secret That a Related Company’s Physical Presence in a Jurisdiction May Not Be Enough For Proper Venue - In Andra Group, LP v. Victoria’s Secret Stores, LLC, Appeal No. 20-2009, The Federal Circuit held that an...more
In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit considered the Patent Trial and Appeal Board’s application of objective indicia to design patent claims. The Board had found that the prior art has the same...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
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
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 Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decisions in two inter partes review (IPR) proceedings, finding that the PTAB applied the wrong standard when it presumed there was a nexus...more
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
State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more
HENNY PENNY CORPORATION v. FRYMASTER LLC - Before Lourie, Chen, and Stoll. Appeal from the United States Patent and Trademark Office. Summary: With respect to secondary considerations of nonobviousness, nexus may be...more
As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...more
In Novartis AG v. Torrent Pharms. Ltd. (2016-1352), the Federal Circuit affirmed the PTAB’s decision in consolidated IPR proceedings (IPR2014-00784, IPR2015-00518) invalidating all claims of U.S. Patent 8,324,283. In doing...more
In Novartis AG v. Torrent Pharmaceuticals Ltd., the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) invalidating all claims of U.S. Patent 8,324,283, which is one of four Orange...more
The Patent Trial and Appeal Board (PTAB) has issued a final written decision determining that the Coalition for Affordable Drugs VIII, LLC (“Coalition” or “Petitioner”) failed to demonstrate that claims 1-10 of U.S. Patent...more
Addressing the real parties-in-interest (RPI) requirement for inter partes review (IPR) and the “nexus” requirement for commercial success to rebut an obviousness challenge, the Patent Trial and Appeal Board (PTAB or Board),...more
Vibrant Media, Inc. v. General Electric Co. - Addressing the issue of whether secondary considerations for non-obviousness showing commercial success of a system allegedly infringing a patent could rebut prima facie...more
A PTAB panel has rejected a patent owner’s evidence of objective indicia of non-obviousness because it lacked the proper nexus with the claimed subject matter. In its brief, the patent owner had argued that praise by others,...more