News & Analysis as of

Section 112 Inter Partes Review (IPR) Proceeding Prior Art

Baker Botts L.L.P.

35 U.S.C. § 112 in IPR: I know you cannot use it to invalidate a claim, but how about breaking the priority chain?

Baker Botts L.L.P. on

It is well established that “a petitioner in an inter partes review … is not permitted to assert a ground of unpatentability under 35 U.S.C. § 112.” Dexcowin Golabl, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7,...more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Scope of IPR Estoppel, Reversing Prior Shaw Decision

The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more

Knobbe Martens

Federal Circuit Review - February 2020

Knobbe Martens on

PTAB May Not Cancel Claims on the Grounds of Indefiniteness in an IPR Proceeding - In Samsung Electronics America v. Prisua Engineering Corp., Appeal No. 19-1169, the Federal Circuit held that the Patent Trial and Appeal...more

Jones Day

CAFC Holds PTAB May Not Cancel Claims For Indefiniteness In An IPR

Jones Day on

The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more

Knobbe Martens

PTAB May Not Cancel Claims on the Grounds of Indefiniteness in an IPR Proceeding

Knobbe Martens on

SAMSUNG ELECTRONICS AMERICA v. PRISUA ENGINEERING CORP. Before Prost, Newman, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: The Patent Trial and Appeal Board (“PTAB”) may not cancel claims on the...more

McDermott Will & Emery

Sharp Turnaround on Applicability of § 112, ¶6 Analysis

McDermott Will & Emery on

Addressing the applicability of 35 USC § 112, ¶6 to the term “mechanical control assembly,” the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) gave undue weight to the patent’s...more

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

PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more

Jones Day

Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

Jones Day on

An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more

Jones Day

Indefiniteness Again Leads To Unsuccessful IPR Challenge

Jones Day on

The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more

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

PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action

When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

Jones Day on

The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Jones Day

PTAB Grants Rare Motion To Amend Patent Claim After Federal Circuit Remand

Jones Day on

Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more

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