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Jennifer Burnette advises clients that innovate in material and polymer sciences, chemistry/chemical engineering, pharmaceuticals, nanotechnology, and mechanical products. Ms. Burnette has experience in strategic patent portfolio management and counseling, foreign and domestic prosecution of patent applications, inter partes post grant proceedings, and counseling clients on invalidity, non-infringement, and freedom to practice matters. She uses her interdisciplinary training in material science to quickly establish in-depth understanding of technologies and invest in understanding a client’s business needs and objectives to counsel clients on how to maximize the value of their patent portfolio. Read full bio here.

In this informative opinion, Luv N’ Care, LTD v. McGinley, Case IPR2017-01216, Paper 13 (Sept. 18, 2017) the PTAB clarified that to be accorded a filing date, a petition must be complete, including receipt by the PTO of the petition fee for institution. As a result of a delay in payment of this fee, Luv N’ Care’s IPR petition was accorded a filing date ten days later than the date on which it filed the petition, and was ultimately barred by the one-year filing bar under 35 U.S.C. § 315(b).Continue Reading IPR Petition Fee Must Be Received Not Merely Tendered for Petition to be Afforded a Filing Date

In Hologic, Inc. v. Smith & Nephew Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018), the Federal Circuit concluded that disclosure of a species provides written descriptive support for a claimed genus where the invention was in a predicable field of art, the species was a well-known member of the genus, and other members of the genus were also well known. As a result, the court affirmed the PTAB’s decision that Smith & Nephew’s PCT application (the “Emanuel PCT”) had sufficient written description to qualify as a priority document, and therefore was not prior art. In reaching this decision, the court relied heavily on the fact that the field of the invention was a predictable art.
Continue Reading Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts

On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and a U.S. attorney.  82 Fed. Reg. 51570-75 (Nov. 7, 2017).  The privilege extends to communications during all aspects of USPTO practice, including traditional prosecution as well as PTAB proceedings. See 82 Fed. Reg. at 51571 (“the purpose of the rule is to protect any communication with authorized counsel from discovery in PTAB, not just communication about the instant proceedings”). The final rule is effective December 7, 2017.
Continue Reading Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO

PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient JustificationIn 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 proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.
Continue Reading PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification

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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 from a PTAB final written decision in an inter partes review does not necessarily establish Article III standing for the appeal.
Continue Reading Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

Privilege Stamp 1In 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 as communications between clients and U.S. attorneys.” 81 Fed. Reg. 71653 (Oct. 18, 2016).  The rule would apply to the various PTAB proceedings that entail discovery, including IPRs, PGRs, the transitional program for CBMs, and derivation proceedings.
Continue Reading Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

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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 are not unconstitutional under Article III or the Seventh Amendment right to a jury trial.  MCM Portfolio LLC. v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015).  In Cooper, the district court granted summary judgment against Cooper on administrative exhaustion grounds and the Federal Circuit summarily affirmed. Cooper v. Lee, 86 F.Supp.3d 480 (2015);  Cooper v. Lee, Nos. 2015-1483, 2016-1071 (Fed. Cir. 2016).  The Government filed briefs in opposition to both petitions – the Cooper opposition brief was filed in April, and the MCM opposition brief was filed in June.  A decision on the petitions is expected at the beginning of the Supreme Court’s October 2016 term.
Continue Reading Government Weighs in on Constitutionality of Inter Partes Review