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PTAB Plays Wrong Tune On Whether Reference is Analogous Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing … Continue Reading

Raiders of the Lost Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it … Continue Reading

PTAB Failed to Apply Standard of Diligence Properly

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR
In ATI Technologies v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019), the Federal Circuit reversed the PTAB’s decision that the Patent Owner had not presented sufficient evidence to swear behind several prior art references.  In doing so, the Federal Circuit reminded the PTAB, as well as practitioners alike, of the proper standard of proof for … Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Doctrine

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, Section 112, Sections 102/103
In Paice LLC, The Abell Foundation, Inc., v. Ford Motor Company, Appeal No. 2017-1406 (Fed. Cir. Feb. 1, 2018), the Federal Circuit reversed a PTAB decision for failing to properly apply the doctrine of incorporation by reference, thereby reminding the PTAB as well as practitioners alike of the proper standard for invoking and applying that … Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because … Continue Reading

Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

By Ryan J. Schermerhorn on Posted in Appeals, Estoppel, Inter Partes Review, IPR, Joinder, Sections 102/103
A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

Petitioner Not Time-Barred By Service of COFC Complaint

By Ryan J. Schermerhorn on Posted in Institution / Denial, Inter Partes Review, IPR, Post Grant Review
Neither the Federal Circuit nor the PTAB has provided much guidance concerning the proper application of the one-year time-bar for filing IPRs when privity is alleged.  Recently, however, in AM General LLC v. UUSI, LLC, Case IPR2016-01049, Paper 14 (PTAB November 7, 2016), the PTAB has provided some guidance. On May 18, 2016, Petitioner AM … Continue Reading

Petition Solicits Supreme Court Review of PTAB’s Authority to Institute IPRs

By Ryan J. Schermerhorn on Posted in Institution / Denial, Inter Partes Review
We previously reported on the Federal Circuit’s decision in Ethicon Endo-Surgery, Inc. v. Coviden, No. 2014-1771 (Fed. Cir. 2016) that the AIA does not preclude the same PTAB panel from rendering both institution and final decisions in an IPR, and we previously reported on the Federal Circuit’s denial, over Judge Newman’s strong dissent, of the … Continue Reading

Federal Circuit Reaffirms that Phillips applies when Patent has expired

By Ryan J. Schermerhorn on Posted in Claim Construction
It is well accepted that the broadest reasonable interpretation (BRI) standard, which the PTO employs during patent examination, and not the Phillips standard applied in district court proceedings, is generally the proper standard to be used when interpreting claims in Post-Grant proceedings such as IPRs and reexamination proceedings.  However, in In Re CSB-System International, Inc., … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

By Ryan J. Schermerhorn on Posted in Amendments, Claim Construction, Covered Business Method, Inter Partes Review, Post Grant Review, Sections 102/103
We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case … Continue Reading

Motion(s) to Amend (Almost Always) Denied!

By Ryan J. Schermerhorn on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013.  The study, which was published by PTAB Chief Judge Nathan Kelly in the … Continue Reading
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