Tag Archives: Prior Art

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

Trade Show Publication Dooms Patent in IPR Appeal Despite Contrary Decision in ITC Appeal

By Heather R. Kissling on Posted in Inter Partes Review, Printed Publication, Sections 102/103
Inter partes review not only provides a faster and cheaper way to challenge patent validity, but also expands the Patent Office’s ability to develop law on esoteric issues relating to prior art. The Federal Circuit’s decision Nobel Biocare Services AG v. Instradent USA, Inc. is another in a line of cases arising out of IPR … Continue Reading

Tradeshow Catalog Qualifies as Prior Art

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review, Printed Publication, Sections 102/103
Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc.  The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “When direct availability to an ordinarily … Continue Reading

It Isn’t Printed Publication Art Unless It’s Publicly Accessible

By William K. Merkel, Ph.D. on Posted in Inter Partes Review, Printed Publication
In IPR2015-01191, American MegaTrends and four other petitioners challenged claims 1-9, 11, 12 and 15 of USPN 6,892,304 owned by Kinglite Holdings, Inc. on grounds of obviousness over three technical documents, supplemented by a fourth document for the challenge to claim 6.  The parties also indicated that they were involved in 11 other IPR petitions … Continue Reading

District Court Interprets IPR Estoppel Provision to Permit Reliance on Cumulative Prior Art Not Reasonably Available in IPR Proceeding

By Tiffany D. Gehrke on Posted in Inter Partes Review, Sections 102/103
In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have … Continue Reading

PTAB Allows Second Chance to Prove Patent is a Covered Business Method

By Julianne M. Hartzell on Posted in Covered Business Method
Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new … Continue Reading

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

By Kevin D. Hogg on Posted in Inter Partes Review
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

PTAB Grants Request for Rehearing on Decision to Institute

By Tiffany D. Gehrke on Posted in Inter Partes Review
In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim.  That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163.  Decision on Institution (Paper 18, “Orig. Dec.”); Request … Continue Reading

Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review
Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR.  A petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] … Continue Reading

Federal Circuit Expected to Provide Guidance on PTAB Claim Amendment Procedures

By Michael R. Weiner on Posted in Appeals, Inter Partes Review
Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during … Continue Reading

PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel

By Katherine L. Neville, Ph.D. on Posted in Inter Partes Review
On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner. The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised … Continue Reading

Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM Review Should Be Nearly Automatic, Whatever the Stage of the Litigation

By Thomas L. Duston on Posted in Covered Business Method, Section 101, Sections 102/103
In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action.  In its appeal brief, Apple argues … Continue Reading

PTAB Upholds Claims Directed to Chemical Process Based on Expert Testimony and Experimental Evidence

By Michael R. Weiner on Posted in Inter Partes Review
On May 27, 2015, the Board issued a final written decision in Organik Kimya AS v. Rohm & Hass Co., IPR2014-00185, confirming the patentability of all challenged claims of U.S. Patent No. 6,020,435. The ‘435 patent is directed to a chemical process for preparing low-density “hollow” or “voided” multi-stage emulsion polymers used in coating compositions … Continue Reading

Prior Art Must be Analogous to the Entire Scope of Problem

By Benjamin T. Horton on Posted in Inter Partes Review
On May 26, 2015, the Board issued its final written decision in Schott Gemtron Corp. v. SSW, IPR2014-00367, confirming the patentability of all of the challenged claims of U.S. Patent No. 8,286,561 (“the ’561 patent”).¹ The Board concluded the prior art on which the petitioner, Schott Gemtron Corporation, relied was not analogous to the ’561 patent’s … Continue Reading
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