Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and c… Read More

Patent Obviousness and Reasonable Expectation of Success

The Federal Circuit has (mostly) sustained the PTAB’s findings that claims of US Patent No. 7,433,483 are obvious over prior art, explaining that obviousness under 35 USC § 103 required, in essence, a showing that the proposed… Read More

PTAB Rejects Secondary Considerations for Patentability

Even though there was no dispute that a commercially successful product encompassed challenged patent claims, the USPTO’s Patent Trial and Appeal Board held that a patent owner failed to show secondary considerations of non-obvi… Read More

CAFC Explains Obviousness Needs Prior Art Support

A recent Federal Circuit case explains that the Patent Office cannot simply assume, interpolate, or make up reasons why patent claims are obvious, e.g., why prior art references would have been combined.  In In re Schweickert, No… Read More

Secondary Considerations Succeed at the PTAB

In a rare instance of relying on secondary considerations to overcome an allegation of obviousness, the Patent Trial and Appeals Board refused to institute an Inter Partes Review of U.S. Patent No. 8,550,271, directed to a crimp-o… Read More

PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc.,… Read More

Judge Robinson Revisits IPR Estoppel, Seeking Federal Circuit Clarification

A district court recently reaffirmed its ruling that statutory estoppel does not apply to grounds of invalidity that could have been included in a petition for an inter partes review but weren’t, clearing the way for the defenda… Read More

PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

In Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018 (Dec. 30, 2016), the PTAB found the phrase “substantially filled” indefinite under 35 U.S.C. § 112(b) on post-grant review (PGR). In the course of reaching this co… Read More

Post Grant Review and Section 112: A Curious Case

In a case where it strikingly relied on prior art sharing a specification with the patent at issue, the USPTO’s Patent Trial and Appeal Board (PTAB) invalidated the patent on several grounds, including lack of written descriptio… Read More

Another Reason Why Ex Parte Reexaminations May Not Be the Best Way to Challenge Patent Claims

Despite the defendant’s diligence in seeking an ex parte re-examination of the patent-in-suit by the USPTO shortly after being sued, a district court has denied the defendant’s motion for a stay.  Pro-Troll, Inc., v. Shortbus… Read More

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