Narrow Estoppel for IPR Petitioner Asserting Prior Art in District Court

A district court recently interpreted the statutory estoppel from an Inter Partes Review (IPR) to not apply to prior art that was publicly available at the time of the petition. Intellectual Ventures I LLC et al. v. Toshiba Corp.… Read More

Broadest Reasonable Interpretation of Patent Claims Must Be Logically Consistent

Here is ammunition for patent applicants and patent owners alike when examiners, or challengers in Inter Partes Reviews, rely on broad readings of claim language that go beyond a broadest reasonable interpretation: D’Agostin… Read More

Federal Circuit Says Ex-Patent Owners Can Bring Inter Partes Reviews

In Husky Injection Molding Systems Ltd., v. Athena Automation LTD., Nos. 2015-1726, 2015-1727 (Sept. 23, 2016), the Federal Circuit rejected Husky’s appeal of a PTAB inter partes review decision that certain challenged claims we… Read More

A Federal Circuit Reminder on the Limits of Obviousness

The circumstances are few in which “common sense” can substitute for a claim limitation missing from the prior art in an obviousness rejection under 35 U.S.C. § 103, the Federal Circuit explained in Arendi S.A.R.L. v. Apple,… Read More

Early PG-Review Decision Shows Patent Examiners and PTAB Diverge on Alice Questions

Patent claims directed to “storage container tracking and delivery” are patent-ineligible under 35 U.S.C. § 101, the Patent Trial and Appeal Board (PTAB) has held in a Final Written Decision in a Post-grant Review proceeding.… Read More

Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection… Read More

PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-… Read More

USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Offic… Read More

Broadest Reasonable Interpretation Has Limits

Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, t… Read More

No Stay When Inter Partes Review Not Yet Instituted

Where the Patent Trial and Appeals Board (PTAB) had not yet ruled on a petition for Inter Partes Review (IPR), a U.S. District Court denied a defendant’s motion for a stay pending completion of the IPR. Seymour Levine v. The Boe… Read More

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