A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness

By Vlada Wendel (US) and Michael Pohl (US) on March 21, 2023 Posted in General

A claim that recites a combination of prior art elements may be obvious when the combination merely involves the use of a “known technique” that “has been used to improve one device” to “improve similar devices in the same way.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).  In Intel Corp. v. … Continue reading

Don’t Xerox conclusory assertions in the expert declaration

By Michael Pohl (US) on February 21, 2023 Posted in General

Expert testimony can be critical to support or defend against invalidity challenges in AIA trials, but must be adequately explained to be effective.  In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Feb. 10, 2023), Director Vidal affirmed and designated as precedential a decision from the Patent Trial and Appeal Board (PTAB) that gave … Continue reading

Federal Circuit confirms that disavowal of claim scope must be “clear and unmistakable”

By Michelle Wang (US) on March 13, 2019 Posted in General

Whether in the patent’s specification or prosecution history, the disavowal of claim scopemust be “clear and unmistakable.”… Continue reading

USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials

By Eagle Robinson (US) on May 9, 2018 Posted in Claim construction, General

In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials. In the Notice of Proposed Rulemaking, the USPTO proposes replacing the broadest reasonable interpretation (BRI) … Continue reading

More SAS: PTAB “May” Revoke Institution in Some Pending Trials

By Eagle Robinson (US) on April 30, 2018 Posted in General, Institution decisions

The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note is that the Board seemingly intends to consider revoking some partial institution decisions to retroactively de-institute … Continue reading

PTAB Feeling SASsy: Institutions to Include “All Challenges”

By Tom Owens (US) and Eagle Robinson (US) on April 29, 2018 Posted in General

The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will institute as to all claims or none” and, when granting institution, “will institute on all … Continue reading

All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims

By Tom Owens (US) on April 25, 2018 Posted in Estoppel, General, Institution decisions

The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 U.S. ___, No. 16-969 (2018). Thus, the Board’s final written decisions in IPRs must address the patentability of all challenged claims. The Board’s … Continue reading

USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews

By Eagle Robinson (US) on April 24, 2018 Posted in General

In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v Greenes Energy Group, LLC, 584 U.S. ___, No. 16-712 (2018). In a 7-2 decision authored … Continue reading

“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments

By Tom Owens (US) on April 5, 2018 Posted in General

In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d).  That statute provides that the board may reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office.”  … Continue reading

Federal Circuit clarifies what IPR petition must disclose to provide adequate notice to Patent Owner

By Taylor Mauze (US) on June 29, 2017 Posted in Federal Circuit, General

In In re NuVasive, Inc., the Federal Circuit clarified what constitutes adequate notice to a Patent Owner of “pertinent portions” of a prior art reference relied upon in an IPR petition. Case No. 2015-1672 (Fed. Cir. Nov. 9, 2016). On appeal to the Federal Circuit after the Board cancelled all but one of the challenged … Continue reading