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Analysis of USPTO post-issuance proceedings

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Federal Circuit Affirms PTAB’s Conclusion that Claims Reciting a Subsidy Are CBM Eligible

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By Andrew Liddell (US) on May 20, 2016

In Blue Calypso, LLC, v. Groupon, Inc., the Federal Circuit concluded that the Board did not exceed its authority to conduct a CBM review of Blue Calypso’s challenged patents, and that the Board correctly applied the statutory definitions of…

Federal Circuit rules that it has no jurisdiction to review PTAB’s refusal to institute redundant grounds

By NRF Digital Team on May 13, 2016

In a recent decision affirming the PTAB’s patentability determination in an IPR, the Federal Circuit confirmed that it has no jurisdiction to review the Board’s refusal to institute grounds it deemed to be redundant of instituted grounds. Harmonic, Inc. v. …

Federal Circuit holds that grounds denied institution as redundant are not subject to estoppel

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By Tom Owens (US) on April 22, 2016

In its recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that estoppel does not apply to grounds denied institution on the basis of redundancy. No. 2015-1116 (Fed. Cir. Mar. 23, 2016)…

Federal Circuit re-affirms and clarifies PTAB rules for motions to amend claims

By NRF Digital Team on April 13, 2016

In Nike, Inc. v. Adidas AG, the Federal Circuit re-affirmed the PTAB’s requirement that in IPR proceedings the Patent Owner must show the patentability of proposed substitute claims over both the prior art of record in the IPR and…

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Federal Circuit approves PTAB practice of addressing patentability of only instituted claims in final written decisions

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By Tom Owens (US) on April 1, 2016

In Synopsys, Inc. v. Mentor Graphics Corp., a split Federal Circuit panel held that final written decisions in IPR proceedings need not address all claims challenged in the petition. Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016).

In…

Federal Circuit rules that PTAB failed to adequately describe its reasoning for obviousness finding

By NRF Digital Team on March 21, 2016

In a recent decision vacating the PTAB’s obviousness findings in an IPR, the Federal Circuit set forth criteria necessary to support future obviousness findings. Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016) (nonprecedential).

In…

Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information

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By Andrew Liddell (US) on March 8, 2016

A unanimous Federal Circuit panel recently affirmed the PTAB’s decision denying a Petitioner’s request to file a motion to submit an expert report as supplemental information under 37 C.F.R. § 42.123(a). Redline Detection, LLC v. Star Envirotech, Inc., No.

Federal Circuit weighs in again on reviewability of institution decisions

By NRF Digital Team on February 23, 2016

In a recent case affirming the PTAB’s final decision of invalidity, the Federal Circuit held that it lacks jurisdiction to review whether the Board improperly instituted a CBM Review on a ground not asserted in the petition. SightSound Techs., LLC …

Federal Circuit approves having same PTAB panel make both institution and final decisions in IPR proceedings

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By James Crawford (US) on February 19, 2016

In affirming a PTAB ruling that the challenged patent was invalid for obviousness, a split Federal Circuit panel recently held that neither the America Invents Act nor the Constitution precludes the same PTAB panel that made the decision to institute…

Federal Circuit confirms that statutory bar defense to AIA proceedings is not subject to waiver

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By Allan Braxdale (US) on July 31, 2015

In GTNX, Inc., v. Inttra, Inc., — F.3d —, 2015 WL 3692319 (Fed. Cir. June 16, 2015), the Federal Circuit held that a Patent Owner’s failure to invoke the statutory bar set forth in 35 U.S.C. § 325(a)(1)…

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Patent Challenges provides reports, updates, commentary and insight on new decisions and other happenings related to post-issuance proceedings (IPR, PGR and CBM) at the Patent Trial and Appeal Board of the USPTO. Contributors are drawn from our deep roster of IP lawyers with experience in patent litigation, patent prosecution and post-issuance proceedings.

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