News & Analysis as of

Patent Ownership Obviousness Final Written Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

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Expectation of Success Analysis Need Not Be Separate

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In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable, even though the PTAB decision...more

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Limitations Absent from a Notice of Allowability May be Material

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On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2020: Does the Federal Circuit Treat APA Challenges Differently if Brought by Petitioner...

Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

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

Akin Gump Strauss Hauer & Feld LLP

References Introduced During IPR Proceeding Not Necessarily New Evidence to Which Patent Owner Had No Opportunity to Respond

On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”)...more

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Inherent Obviousness: Available IPR Rationale With a High Standard

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On November 28, 2017, the PTAB issued a final written decision upholding the patentability of U.S. Patent No. 6,667,061 (IPR2016-01096). The ’061 patent is owned by Alkermes Pharma Ireland, Ltd. and Alkermes Controlled...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Grants Contingent Motion to Amend on Remand from Federal Circuit

On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015,...more

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Secondary Considerations Carry The Day

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We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to...more

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