News & Analysis as of

Patent Trial and Appeal Board

Issue Eleven: PTAB Trial Tracker

by Goodwin on

PTAB Grants-in-Part Motion to Amend Claims, Even Though Federal Circuit Previously Invalidated the Claims - In Semiconductor Components Industries, LLC v. Power Integrations, Inc., IPR2016-01600, Paper 35 (PTAB Feb. 14,...more

Motions to Amend at the PTAB -- Does Anyone Have the Burden (And Will That Change)?

Last year, the Federal Circuit decided the Aqua Products, Inc. v. Matal case en banc in what could be considered the epitome of a fractured decision. After 148 pages and five separate opinions, the only agreed-to result...more

CAFC Rule 36 Judgement: 24 Hour Affirmance with No Explanation

Nothing hurts worse than a Rule 36 (single page, single sentence affirmance of the decision below) after years of work and millions of dollars spent on a case. Rule 36 makes rehearing, en banc review, and/or cert petitions a...more

PTAB Strategies and Insights - February 2018

The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more

Be Advised: Settlement Does Not Necessarily End An IPR Or PGR

by Jones Day on

The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent...more

Hearsay Hurdle: Proving Nonpatent Literature Is Prior Art

Validity challenges in inter partes review and post-grant review at the Patent Trial and Appeal Board often rely on nonpatent literature publications that petitioners must show to be "prior art." Originally published in...more

Toyota Requests Adverse Judgment After University of Minnesota is Dismissed from IPR on the Basis of Sovereign Immunity

by Knobbe Martens on

A closely watched case on sovereign immunity, Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, has now been terminated by the patent owner’s request for adverse judgment....more

Who's in Charge Here? Or Is the PTAB Bound by USPTO Guidances?

In a decision from an appeal before the Patent Trial and Appeal Board following rejection of claims to an isolated nucleic acid apparently (to applicants) falling within the scope of U.S. Patent and Trademark Office Guidance...more

In re: Hodges

by Knobbe Martens on

Federal Circuit Summaries - Before Lourie, O’Malley, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation,...more

Unsupported Assertions: Expert’s Persuasive Authority Suffers Without Directly Engaging Claim Limitations

by Jones Day on

An expert asserting that a patent claim reciting different features than the prior art is nonetheless “equivalent” to the prior art must address and account for the recited limitations head-on, or otherwise lose persuasive...more

Some Decisions for the Patent Office to the Institute IPR Validity Challenges May Be Appealed to the Federal Circuit

Abstract - A split decision of the U.S. Court of Appeals for the Federal Circuit determined that decisions by the Patent Office to institute IPR validity challenges may be appealed to the Federal Circuit when such...more

Collateral Estoppel at the Federal Circuit for Inter Partes Review Proceedings

by Foley & Lardner LLP on

In Maxlinear, Inc. v. CF CRESPE, LLC, slip op. 2017-1039, the Federal Circuit remanded to the Patent Trial and Appeal Board (“Board”) an inter partes review (“IPR”) proceeding to evaluate the patentability of certain...more

In Re: Nordt Development Co., LLC

by Knobbe Martens on

Federal Circuit Summaries - Before Moore, Taranto, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: In a product-by-process claim, terms that can be equally understood as structural or process...more

Board’s Obvious Analysis Improperly Relied Upon Hindsight

In Polaris Industries, Inc. v. Arctic Cat, Inc., [2016-1807, 2016-2280] (February 9, 2018), the Federal Circuit affirmed in part, vacated in part, and remanded the PTAB’s determination in an IPR that claims of U.S. Patent No....more

PTAB Denies Institution of IPR on Two Humira Patents

by Goodwin on

The PTAB has denied institution of inter partes review of two Abbvie patents that relate to HUMIRA (adalimumab). On February 9, 2018, the PTAB denied Sandoz’s IPR2017-01824 on U.S. Patent No. 9,512,216, which is directed to a...more

Not So Common Sense? Reliance on Common Sense to Establish Obviousness

by Jones Day on

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), the Supreme Court stated that “common sense” can be considered in reaching a conclusion that a claimed invention is obvious. Since then, both litigants and patent...more

Ex parte Kotanko (PTAB 2018)

In an interesting decision issued last year, the Patent Trial and Appeal Board reversed the final rejection of claims 1-5 and 9 in U.S. Application No. 12/959,017. The claims at issue had been rejected under 35 U.S.C. § 101...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application

by Jones Day on

A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or...more

Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are

In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board’s claim construction of “injection molded” as a process limitation with no patentable weight, vacated the Board’s...more

Intellectual Property Tailwinds Continue To Favor Section 337 Enforcement Actions Before The International Trade Commission

by Dickinson Wright on

Section 337 intellectual property enforcement actions before the International Trade Commission (“ITC”) continue to gain in popularity....more

Key Patent Decisions of 2017

by Jones Day on

In another noteworthy year for patent law, the U.S. Supreme Court and Federal Circuit issued a number of decisions that altered the patent landscape, including four Supreme Court decisions. The topics of the key cases...more

Polaris Industries, Inc. v. Arctic Cat, Inc.

by Knobbe Martens on

Federal Circuit Summaries - Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s],...more

No Rehearing Because of Hindsight Declaring

The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its...more

Design Patent pto litigation statistics (through JANUARY 15, 2018)

The statistics below reveal the current trends on proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation. No new design patent petitions have been filed since April 2017, and only one Board...more

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