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PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification

In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the … Continue Reading

Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant’s (Phigenix) appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR. The court’s decision demonstrates that statutory right of appeal … Continue Reading

Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent … Continue Reading

Government Weighs in on Constitutionality of Inter Partes Review

Two petitions for certiorari are pending before the Supreme Court in which the aggrieved patent owners in MCM Portfolio LLC. v. Hewlett-Packard Co. and Cooper v. Lee are challenging the constitutionality of AIA trials.  The Federal Circuit in MCM Portfolio upheld the PTAB’s authority to adjudicate the validity of issued patents, determining that IPR proceedings … Continue Reading
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