News & Analysis as of

Prior Art Patents

Anticipation Requires More Than A Reference That Discloses All The Elements

by Jones Day on

In Microsoft Corp. v. Biscotti, Inc., Nos. 2016-2080, -2082, -2083, 2017 WL 6613262 (Fed. Cir. Dec. 28, 2017), a divided Federal Circuit panel affirmed the Patent Trial and Appeal Board’s decision that Microsoft failed to...more

Unclaimed Features Doom Patent Claims Under Section 101 Eligibility Analysis — Lessons from Two-Way Media

When claims are subject to the subject matter eligibility inquiry under 35 USC 101, details matter. In previous posts, the Patent 213 blog has stressed the need to provide details of the invention not only in the...more

Federal Circuit Affirms PTAB’s Decision of No Anticipation in Microsoft v. Biscotti

In Microsoft Corporation v. Biscotti, Inc., Nos. 2016-2080, 2016-2082, 2016-2083 (Fed. Cir. Dec. 28, 2017), the Federal Circuit affirmed the PTAB’s decisions finding Microsoft failed to prove the challenged claims were...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

The big news of today is the Circuit’s en banc decision in Wi-Fi One v. Broadcom in which a majority of the court holds that, given the strong presumption in favor of judicial review, the Circuit should hear appeals of the...more

About “About”: “Less Than About 3%” Includes 4%

In Monsanto Technology LLC v. E.I. DuPont De Nemours & Co., [2017-1032] (January 5, 2018), the Federal Circuit affirmed the PTAB’s decision that affirmed reexamination examiner’s rejection of claims of U.S. Patent No....more

Declarations as New Evidence to Overcome § 325(d)

by Jones Day on

We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...more

Monsanto Technology LLC v. E.I. Dupont De Nemours

by Knobbe Martens on

Federal Circuit Summaries - Before Dyk, Reyna, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Extrinsic evidence can be used to find that an allegedly anticipating reference necessarily includes...more

Inherent Obviousness Means Element Is Necessarily Present, Not Just Obvious

by Jones Day on

In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more

Year in Review: The Most Popular Blog Posts of 2017

As 2018 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2017. According to the many readers of Global IP Matters, hot topics included navigating...more

Anticipation Analysis Indisputably Allows for Some Flexibility; Substantial Evidence Still Supports Finding of No Anticipation

In Microsoft Corp v. Biscotti, Inc., [2016-2080, 2016-2082, 2016-2083] (December 28, 2017), the Federal Circuit affirmed the Board’s determination in the IPR’s that Microsoft failed to show by a preponderance of the evidence...more

Federal Circuit Clarifies the “Reasonable Expectation of Success” Required in Hatch-Waxman Obviousness Challenges

by Dechert LLP on

The U.S. Federal Circuit recently clarified the standard that patent challengers must satisfy when attempting to invalidate patented inventions directed to new uses for known drugs. Although designated as a nonprecedential...more

ALJ Denies Inequitable Conduct “Fishing Expedition”

by Jones Day on

In a recent order, Administrative Law Judge Lord denied Respondents CSL Behring LLC, CSL Behring GMBH, and CSL Behring Recombinant Facility AG (“CSL Behring”) motion to compel discovery from Complainants Bioverativ Inc.,...more

Microsoft Corporation v. Biscotti, Inc.

by Knobbe Martens on

Federal Circuit Summaries - Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a...more

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

iLife is Full of Un-Nintendo-ed Consequences

It is a commonplace among patent lawyers to say that if an independent claim is novel and nonobvious, then the corresponding dependent claims must also be novel and nonobvious. See, e.g., MPEP §2143.03 (“If an independent...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In both HTC v. Cellular and Microsoft v. Biscotti, the Circuit affirms rare IPR determinations that all of the claims of the patents at issue are not invalid. In Travel Sentry v. Tropp, the Circuit vacates summary judgment in...more

PTAB Denies CBM Institution Based on Technological Invention Exception

by Jones Day on

On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

The Turning Tide of Adoption of the Lead Compound Analysis Is Favoring Patent Owners at the PTAB

The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more

Bosch Automotive Service Solutions, LLC v. Matal

by Knobbe Martens on

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

Pending Reexamination Causes Denial of IPR Petition Under § 325(d)

In Fox Factory, Inc. v. SRAM, LLC, the Patent Trial and Appeal Board (PTAB) exercised its discretion to deny institution of a petition for inter partes review (IPR). IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017). Under 35 U.S.C....more

Aqua Holds Water; Board’s Denial of Motion to Amend Vacated Because Board Improperly Put Burden on Patent Owner

In Bosch Automotive Service Solutions, LLC v. Matal, [2015-1928] (December 22, 2017), the Federal Circuit affirmed the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, of U.S. Patent No. 6,904,796, on a remote...more

Even Non-Obvious Patent Claims May Lack Inventive Concepts

by Knobbe Martens on

In the recent Two-Way Media v. Comcast decision, the Federal Circuit affirmed a district court’s holding that evidence of non-obviousness was irrelevant to patent eligibility under the Supreme Court’s two-step Alice...more

Indefiniteness Standard Less Strict Where Claim Term Does Not Concern Point of Novelty

by McDermott Will & Emery on

Addressing indefiniteness under Nautilus, the US Court of Appeals for the Federal Circuit reversed a district court’s finding that the claim term “effective for catalyzing” was indefinite even though the claim did not specify...more

Reference Reasonably Pertinent to One Problem Deemed Analogous Art

by Jones Day on

Section 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” but longstanding precedent couches this question of fact in terms of “whether the art is analogous or not.”...more

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

by Jones Day on

In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination. Fox Factory, Inc....more

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