686 articles · page 36 of 58
325(d) Compliments SNQ Standard The popularity of AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) has caused a corresponding nosedive in patent reexamination filings . Not surprisingly, when faced with a high-value patent dispute, patent…
Federal Circuit Summary Before Prost, Moore , and Stoll. Appeal from the Patent Trial and Appeal Board. Summary : An IPR petitioner bears the burden of persuasion concerning the patentability of proposed substitute claims. Institut Straumann AG and Dental…
Previously Exercised Discretion Eliminated by SAS While most remember the Cuozzo appeal as challenging the Patent Trial & Appeal Board’s (PTAB) claim construction practices, it also challenged the Board’s discretion to institute claims on…
On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc . as informative on the issue of Motions to Amend during an IPR. At the same time, the USPTO de-designated two previously…
Federal Circuit Summary Before Taranto, Plager, and Chen . Appeal from the Patent Trials and Appeals Board. Summary : In determining whether materials distributed at meetings or conferences are reasonably accessible to the public, the Board must consider…
Federal Circuit Summary Before Wallach, Taranto , and Stoll. Appeal from the Patent Trial and Appeal Board. Summary : The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in an IPR even though the Board erred in…
Federal Circuit Summary Before Lourie, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board (“PTAB”). Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the examiner’s answer that…
Although, somehow, examiners and PTAB Judges are supposed to refrain from considering anticipation or obviousness when evaluating claim elements for the “inventive step” required for patent eligibility, that’s just not possible. The…
I know that Fed. Cir. s 101 decisions are inherently more instructive than PTAB decisions, but PTAB (and district court) s. 101 decisions are like legal potato chips – if you sample one, you just can’t quit. For example, in Ex Parte Stone,…
Federal Circuit Summary Before Prost, Newman, and Lourie . Appeal from the United States Patent and Trademark Office (PTAB) Summary : A limitation that merely claims information by incorporating that information into a mental step or process is not…
Federal Circuit Summaries Before Reyna, Bryson , and Stoll. Appeal from the Patent Trial and Appeal Board. Summary : A petitioner in an Inter Partes Review may introduce new evidence not included in its petition if: 1) the evidence is a reply to evidence…
Federal Circuit Summary Before Wallach , O’Malley, and Schall. Appeal from the Patent Trial and Appeal Board. Summary : PGR petitioner has standing to appeal PTAB decision, where petitioner intended to file an ANDA for the patented product as soon as…
