Federal Circuit to PTAB – Explain yourself!!

The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious. In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings. These decisions … Continue Reading

Dissent: “Deferential review by the Federal Circuit falls short of the legislative purpose of providing optimum determination of patent validity.”

By Tiffany D. Gehrke on December 29, 2015 Posted in Appeals, Inter Partes Review, Legislation, Sections 102/103

In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness. … Continue Reading

Petitioner Must Prove Reference Art Entitled to Filing Date of its Provisional Application.

By Tiffany D. Gehrke on September 10, 2015 Posted in Appeals, Sections 102/103

When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date … Continue Reading