Tag Archives: PTAB

Incorporated References Can Be Used in an Anticipation Rejection

Photo of Ron KernBy Ron Kern on Posted in Patent
Patent concept with man using tabletA claim is said to be anticipated when a single prior art reference discloses, either expressly or inherently, each and every limitation of the claim. But what happens when a prior art reference discloses some aspects of the claimed invention and incorporates by reference additional prior art references that disclose other aspects of the claimed … Continue Reading

Federal Circuit Develops the ‘At Once Envisage’ Standard of Anticipation and Affirms the Importance of Specialized Considerations in the Chemical Arts

Photo of Michael Schwartz Ph.D.By Michael Schwartz Ph.D. on Posted in Patent
Anticipation of a claim generally requires that a single prior art reference explicitly discloses each and every claim element.[1] However, absent an express teaching in the prior art, a claim may also be anticipated if it is directed to a member of a limited class that a person of ordinary skill in the art would … Continue Reading

Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

Photo of Charles CarsonBy Charles Carson on Posted in Patent
In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review … Continue Reading

The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court … Continue Reading

PTAB by the numbers: A closer look at the most recent PTAB AIA trial statistics

Photo of Fabian KoenigbauerBy Fabian Koenigbauer on Posted in USPTO
The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020).[1]  Despite some inconsistences in the data, the statistics reveal some trends: Inter partes reviews (IPRs) remain the most common type of America Invents Act (AIA) trial. Life science/chemical patents and … Continue Reading

POP Addresses IPR Printed Publication Standard

Photo of Timothy DoyleBy Timothy Doyle on Posted in Patent
The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable … Continue Reading

Standing Necessary To Appeal an Inter Partes Review Decision

Photo of Kevin FlynnBy Kevin Flynn on Posted in Patent
Article III of the Constitution grants the federal judiciary the power to decide “cases and controversies.”[1] “Standing,” the legal concept ensuring that federal courts review only cases and controversies, focuses on the party bringing suit to analyze the appropriateness and constitutionality of judicial review. The court-limiting effects of standing help ensure that the separation of … Continue Reading

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed To Support PTAB’S Finding of Obviousness

Photo of Scott FeldmannBy Scott Feldmann on Posted in Patent
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC) cancer.[1] The PTAB found that it would have been obvious to combine pharmaceutical references. The Federal Circuit, however, noted that the “asserted … Continue Reading

Proving That a Negative Claim Limitation Is Disclosed by the Prior Art: Takeaways From Two Recent Federal Circuit Opinions

Photo of Mark EinsiedelBy Mark Einsiedel on Posted in Patent
Occasionally, a patentee will seek to define its invention with claims that recite a negative claim limitation – a specialized category of claim element that recites an element that is expressly and deliberately excluded.[1] By way of example, a claim directed to a stool with the limitation that the stool is “devoid of a backrest … Continue Reading

Federal Circuit’s Concern Regarding PTAB ‘Panel-Stacking’ – Back To The Future?

By Bill Smith on Posted in Patent
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 2017 U.S. App. LEXIS 15923, Circuit Judge Dyk, in a concurring opinion joined by Circuit Judge Wallace, questioned “whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the PTO’s desire for uniformity.” … Continue Reading

PTAB Grants Discovery to Underlying Test Data

Photo of David FarsiouBy David Farsiou on Posted in Patent
Discovery in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) is typically quite limited, and the PTAB normally is reluctant to grant motions for additional discovery. It is instructive, therefore, when the PTAB does so. In a recent order in Mylan Pharmaceuticals Inc. v. Allegan, Inc., IPR2016-01127, Paper 28 (PTAB … Continue Reading

Availability of Reissue After an Invalidity Determination

By Samuel McMahon on Posted in Patent
A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1] Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective … Continue Reading

Requirements of § 121’s Safe Harbor: Ensuring That Divisional Applications Will Be Protected Against OTDP Rejections

By Samuel McMahon on Posted in Patent
In a recent decision, the Patent Trial and Appeal Board (PTAB) narrowly construed the so-called safe harbor provision of 35 U.S.C. § 121, affirming the examiner’s rejection of a patent application under the doctrine of “obviousness-type double patenting” (OTDP). Ex parte Sauerberg, Appeal 2015-007064 2017 WL 150016 *1 (PTAB Jan. 10, 2017). The safe harbor protects … Continue Reading

Federal Circuit looks to provisional patent application in determining claim scope

Photo of Erin CaldwellBy Erin Caldwell on Posted in Patent
Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of … Continue Reading

When Obvious Isn’t Obvious: Personal Web Technologies

Photo of Brendan ClarkBy Brendan Clark on Posted in Patent
On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court’s role in enforcing the principles of administrative … Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

By Allen Sokal on Posted in Patent
  Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, … Continue Reading

Post Grant Review: § 112 and Eligibility Issues in Chemical and Life Sciences

By Samuel McMahon on Posted in Patent
Post Grant Review (PGR) petitions are on the rise, and nearly half of all petitions to date have challenged patents in Biotechnology and Organic Chemistry, or Chemical and Materials Engineering technology centers.[1] We have reviewed PGR petitions filed against patents in these technology categories.[2] One final written decision issued on Nov. 14, 2016,[3] and more … Continue Reading

Federal Circuit Holds PTAB Unreasonable in Denying Motion to Amend

By Allen Sokal on Posted in Federal Circuit
In Veritas Technologies LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016), the Federal Circuit affirmed the PTAB’s conclusion of obviousness but vacated its denial of a conditional motion to amend and remanded for the PTAB to address the patentability of the substitute claims. The patent owner, Veritas, argued for a … Continue Reading

First Post-Grant Review Written Opinions from PTAB Invalidate Two Patents for Livestock Valuation

By Shannon McCue on Posted in Patent
The Patent Trial and Appeal Board (PTAB) issued its first written opinions based on a trial of the relatively new Post-Grant Review (PGR) proceeeding and genetic factors. American Simmental Association (ASA) brought the petitions for review of the Leachman patents in response to a lawsuit filed by Leachman. ASA is an organization formed in 1968 … Continue Reading

Amended PTAB Rules to Take Effect on May 2, 2016

By Charlie Lyu on Posted in Patent, Trademark
On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will take effect. The rules apply to all currently pending and future proceedings before the PTAB. The primary amendments are: Testimonial Evidence Permitted in Patent … Continue Reading
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