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Patents Prior Art Burden-Shifting

Knobbe Martens

Patent Owner Arguments Do Not Limit the Scope of the Issues the Board May Address in Its Final Written Decision

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FANDUEL, INC. v. INTERACTIVE GAMES LLC - Before Dyk, Moore, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: The Board does not violate the Administrative Procedure Act (APA) if it institutes trial...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: E.I. Dupont De Nemours & Co. v. Synvina...

DuPont petitioned for inter partes review of Synvina’s patent, which was directed to a method of oxidizing a chemical using a specific temperature range, pressure range, catalyst, and solvent. The prior art disclosed the...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

Knobbe Martens

Federal Circuit Review - October 2018

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IPR Petitioner’s Initial Identification of the Real Parties in Interest Is to Be Accepted Unless and Until Disputed by a Patent Owner - In Worlds Inc. v. Bungie, Inc., Appeal Nos. 2017-1481, -1546, -1583, the Federal...more

Knobbe Martens

Protecting Your Claimed Ranges

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Assertions of obviousness based on prior art references in combination with “routine optimization” by one skilled in the art are common in the chemical and biological fields. The Federal Circuit recently addressed this issue...more

Akin Gump Strauss Hauer & Feld LLP

A Claimed Parameter Range That Overlaps with Ranges in the Prior Art Creates a Burden-Shifting and Rebuttable Presumption of...

The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2018 #4

PATENT CASE OF THE WEEK - Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Appeal Nos. 2016-2691, 2017-1875 (Fed. Cir. Sept. 20, 2018) In a reissued, slightly altered version of a July 3, 2018 decision,...more

Jones Day

Clarified: Standing Requirements and Burden Shifting Framework in IPR Proceedings

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Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit....more

Knobbe Martens

E.I. Dupont De Nemours & Co. v. Synvina C.V.

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Federal Circuit Summary - Before Lourie, O’Malley, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior...more

Knobbe Martens

Bosch Automotive Service Solutions, LLC v. Matal

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Federal Circuit Summaries - Before NEWMAN, CHEN, and HUGHES. Appeal from the Patent Trial and Appeal Board. Summary: In inter partes review, the patent challenger bears the burden of proving that proposed amended...more

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

Second Chances for Secondary Considerations - Hiding the "Novelty Ball"

Like Johnny Cash’s famous tune “A Boy Named Sue,” “secondary considerations” of non-obviousness suffer for their name. Courts have historically relegated this 4th Graham factor to a “secondary” status, considering objective...more

Jones Day

In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee

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On March 3, 2017, in a final written decision in IPR2015-01838, the PTAB rejected an obviousness challenge brought by DuPont against a patent owned by Furanix Technologies B. V. directed to methods for preparing the known...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Aqua Products, Inc. -- CAFC Grants Rehearing En Banc to Consider PTAB Motions to Amend

On Friday, August 13, 2016, the Federal Circuit granted a petition for rehearing en banc filed in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR...more

Foley & Lardner LLP

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

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On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

McDermott Will & Emery

In the Wake of Dynamic Drinkware, PTAB Rejects Prior Art Due to Petitioner’s Failure to Establish Earlier Priority Dates (VMware,...

Addressing the burden-shifting requirements for establishing priority of prior art references, the Patent Trial and Appeal Board (PTAB or Board) recently issued two decisions finding that the petitioners failed to meet their...more

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