Subscribe to all posts by Kevin D. Hogg

Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art

In Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition  asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its … Continue Reading

PTAB Confronts Issues Raised By IPR Remand From Federal Circuit

In issuing a second final decision in Microsoft Corp. v. Proxyconn Inc., IPR2012-00026/ IPR2013-00109, Paper No. 80 (Dec. 9, 2015), the PTAB dealt with a “what do we do now,” both procedurally and substantively, after its initial final decision was reversed in part and remanded “for further proceedings” by the Federal Circuit in an opinion … Continue Reading

PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill

En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providing testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015).  The first issue was whether … Continue Reading

PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?

In MasterImage 3D, Inc. v. RealD Inc., the Patent Trial and Appeal Board (PTAB) reaffirmed that the patent owner bears the burden of establishing the patentability of any amended claims proposed in an AIA trial over two categories of prior art: (a) the “prior art of record” and (b) “prior art known to the patent … Continue Reading