Jeff Kitchen (US)

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CAFC requires weighing diligence evidence as a whole and rejects “scouring” for gaps

In Perfect Surgical v. Olympus America, Inc., the Federal Circuit found harmful error in the PTAB’s diligence framework and conclusions, thereby potentially lowering the bar required to establish diligence in PTAB cases. Case No. 2015-2043 (Fed. Cir. Nov. 15, 2016). In the underlying IPR, the Board found a patent owner did not prove the inventor continuously … Continue reading

Federal Circuit Rejects PTAB’s Reliance on “Common Sense” to Supply Missing Claim Limitation

In Arendi S.A.R.I. v. Apple Inc., et al., the Federal Circuit reversed a PTAB decision finding all instituted claims in an IPR invalid as obvious based on the prior art and “common sense.” No. 2015-2073 (Fed. Cir. Aug. 10, 2016). The challenged patent claimed, in part, a method for accessing a document and searching for … Continue reading

PTAB institutes IPR based on prior art that was previously presented to the USPTO

Under 35 U.S.C. § 325(d), the PTAB “may take into account whether, and reject [a] petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In Microsoft Corp. v. Parallel Networks Licensing, LLC, the Board instituted an IPR even though institution was primarily based on a prior art … Continue reading

PTAB confirms that estoppel does not bar subsequent petitions on non-instituted claims

In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s motion to terminate a CBM proceeding, holding that estoppel under 35 U.S.C. § 325(e)(1) does not apply to claims previously denied institution. CBM2014-00176, Paper 28 (May 14, 2015). 35 U.S.C. § 325(e)(1) states that “[t]he petitioner in a post-grant review of a claim in … Continue reading