§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics… Read More

Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method R… Read More

Limits on Obviousness - Beyond the Claim Elements

Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The… Read More

State Universities Not Entitled to Sovereign Immunity from IPRs

Sovereign immunity does not exempt state governments from inter partes review, according to a Federal Circuit decision issued on Friday in Regents of the University of Minnesota v. LSI Corp. The decision extends the Federal Circui… Read More

Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decisi… Read More

PGR Gives a Second Bite at Patent-Ineligibility

Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions.  Even if the USPTO in the form of a patent examiner has deemed clai… Read More

Supreme Court Upholds IPRs in Oil States

On Tuesday, the Supreme Court released its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, holding that the inter partes review procedure does not violate Article III of the Constitution. The Court main… Read More

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More

CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 201… Read More

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

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PTAB Practice: Recent Developments in Estoppel
November 21, 2019 at 12:00 pm EST
There are a wide range of estoppel issues that may be triggered under the America Invents Act (AIA) as a result of proceedings before the Patent Trial and Appeal Board (PTAB).  These estoppel issues complicate decision making in pursuing parallel pr…Register

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