Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged ptab · clear
Happy New Year! We have decided to write more often in 2019 as many of our readers have asked us to bring back our popular Patexia Insight series. Our goal is to bring as much value to the community as possible, so we will do our best to create more…
Even Preliminary Proceeding Arguments Notice the Public It is well-established that statements made by a Patent Owner during an inter partes review (IPR) can constitute prosecution disclaimer— even in papers filed by a Patent Owner before the trial.…
On November 7, 2018, the Fed. Cir. issued a summary affirmance of the PTAB’s interference decision of September 6, 2016, in Kumar v. Sung ( Patent Interference 14/322,039 ) which found that the claims of U.S. Pat. No. 8,541,422 were obvious over a…
On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB). In particular, the USPTO is replacing the “broadest…
Leveraging PTAB 101 Determinations in Parallel Litigation Covered Business Method (CBM) challenges have fallen out of favor with petitioners. This is due to a number of factors, not the least of which is the narrowing of CBM jurisdiction after Unwired…
The quote is from “Treasure of the Sierra Madre” when a bandido leader is trying to convince Bogart that his gang are Federales, and Bogie asks to see their badges. In the context of Yeda Res. and Dev. v. Mylan, Appeal no. 2017-1594 et al.…
Invalidity Contentions Serve as Estoppel Benchmark A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or…
After much deliberation, the USPTO has published a Final Rule mandating that the claim construction standard articulated by the Fed. Cir. in Phillips v. AWH Corp., 415 f .3d 1301 (Fed. Cir. 2005), and used by federal district courts, will replace the…
Final Rule Publishes Tomorrow As predicted last week , the final rule package to switch the to the Phillips claim construction for AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) will publish Thursday. (advanced copy here ). The change will…
Change in Claim Construction Standard Provides Greater Appellate Opportunity Some months back the Patent Trial & Appeal Board (PTAB) proposed dropping the broadest reasonable interpretation (BRI) in favor of the so-called “Phillips…
I am going to try to discuss two recent decisions by the PTAB, Ex parte Fiesner, Appeal 2018-00530 (9-10-18) and Ex parte Lehrer, Appeal 2016-007941 (8-29-2018). Both have claims that employ computers to process large amounts of input data to, hopefully,…
In ex parte Ho , the subject of my last post, the PTAB reversed the Examiner’s rejection of claims to a population of bone marrow cells obtained by two-stage culturing that expressed or failed to express certain markers. The PTAB wrote that, for the…
