Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged ptab · clear
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,…
The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard applied in federal courts and…
On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings. As has been widely reported, SAS reversed the PTAB’s long-standing…
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc ., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications where the reference…
The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a broad reading of the…
In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB ordered that the remand…
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. B ecton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB…
CASE OF THE WEEK Knowles Electronics LLC v. Iancu , Appeal No. 2016-1954 (Fed. Cir. 2018) In an appeal from an inter partes reexamination , the Federal Circuit affirmed a decision by the PTAB invalidating a patent concerning microphones. The case was…
The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®. Se e The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB.…
In In re: Power Integrations, Inc. , [2017-1304] (March 19, 2018), the Federal Circuit reversed the decision on remand that claims 1, 17, 18, and 19 of U.S. Patent No. 6,249,876 were anticipated, because the Board relied upon an unreasonably broad claim…
In DSS Technology Management, Inc. v. Apple Inc., [2016-2523, 2016-2524] (March 23, 2018), the Federal Circuit reversed the decision of the PTAB, finding claims 1–4 and 9–10 of U.S. Patent No. 6,128,290 obvious, because the Board failed to…
