General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors for Follow-On Petitions
October 9, 2017| Blog
On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.
AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner
October 5, 2017| Blog
The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.
Am I Being Clear Enough? - PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward
September 20, 2017| Blog
On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.
ITC Denies Suspension or Temporary Rescission of Remedial Orders After PTAB Invalidates Patents at Issue
July 28, 2017| Blog
In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No. 337-TA-945 pending appeal of the Patent Trial and Appeal Board’s (“PTAB”) separate finding that the patent claims at issue are invalid.
June 28, 2017| Blog
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review.
June 22, 2017| Blog
In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”
June 14, 2017| Blog
The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the “’668 Patent”) on June 1, 2017.
You Can Not Claim What you Don't Possess - Federal Circuit Holds Fiber Optic Claims Invalid under Section 112
May 18, 2017| Blog
On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.
April 28, 2017| Blog
The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc. finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”) as being “not supported by substantial evidence.”
April 25, 2017| Blog
Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.
April 18, 2017| Blog
On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings.
PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious
February 1, 2017| Blog
For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of non-obviousness compelled rejection of the Petitioner’s invalidity challenges.
January 12, 2017| Blog
The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different.
December 22, 2016| Blog
The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today. The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.
December 21, 2016| Blog
The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.
November 21, 2016| Blog
On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.
Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures
November 15, 2016| Blog
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
November 1, 2016| Blog
Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
October 28, 2016| Blog
Since Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.
October 28, 2016| Blog
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.
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