When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Tri… Read More

Patent That Survived Alice Is Not Obvious

A little less than a year after finding that claims of U.S. Patent No. 6,474,159, directed to an inertial tracking system, were patent-eligible under the Alice abstract idea test, the Federal Circuit has affirmed a decision of the… Read More

No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes revi… Read More

Broad Claim Term Dooms Patent at PTAB

Last month, the Patent Trial and Appeal Board issued a final written decision in Bright House Networks v. Focal IP (IPR2016-01263), finding the telecommunications patent in question obvious based on a broad claim construction of … Read More

Low Bar for USPTO to Show Motivation to Combine

A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined.  In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (F… Read More

Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to… Read More

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a pe… Read More

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc… Read More

Obviousness Upheld with Secondary Reference Unrelated to Field of Technology

When can prior art references be combined to invalidate patent claims as obvious under 35 U.S.C. § 103?  Here is one case providing a lesson on this question.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd.,… Read More

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U… Read More

Upcoming Webinar

Thomas Bejin of Bejin Bieneman PLC will discuss best practices for Ex Parte Patent Appeals.  Ex Parte Patent Appeals can be an effective tool to advance prosecution.  The webinar will begin with an overview of the Ex Parte Appeal process, including…Register

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