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Category: PTAB


PTAB Makes Broadest Interpretation on Estoppel in IPRs
November 12, 2018
Post by Oliver P. Couture, Ph.D.
Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file a second IPR based on different groun.......
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An IPR Appellant Must Establish an Injury to Have Standing
August 10, 2018
Post by Blog Staff
In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an IPR on a patent owned by GKN. The Patent Trial and Appeal Board (PTAB) instituted the revie.......
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PTAB to Consider When Conference Materials are Prior Art
June 11, 2018
Post by Blog Staff
In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that certain other references .......
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In Re: Durance
June 04, 2018
Post by Blog Staff
In In Re: Durance, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated the Patent Trial and Appeal Board’s (“PTAB”) ruling affirming an examiner’s obviousness rejection of a patent application related to a microwave vacuum-drying apparatus and method. The CAFC remanded for consideration of the applicants’ reply-brief arguments because they were properly made in response to the exa.......
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Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court
April 24, 2018
Post by Jonathan L. Kennedy
The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate Article III of the constitution by assigni.......
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PTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case
January 26, 2018
Post by Jonathan L. Kennedy
In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner's indefiniteness rejection as the it failed to establish a prima facie case of indefiniteness. InEx Parte Kimura, Appeal No. 17-1293 (PTAB Jan. 25, 2018), the claims were rejected for reciting, "normal pumping operation." The rejection stated the term was indefinite because "[t]he claims fail to define what a no.......
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Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases
September 21, 2017
Post by Jonathan L. Kennedy
In a recent decision by the Federal Circuit Court of Appeals, In re Stepan Company, the Federal Circuit reversed the Patent Trial and Appeal Board decision to affirm an examiner’s rejection that claims were obvious.  The claims in the application were directed to ultra-high load, aqueous glyphosate salt-containing concentrates comprising water, a glyphosate salt in an aqueous solution, a surfact.......
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When Life Hands you Lemons, Make CoQ10
July 27, 2017
Post by Blog Staff
In the Federal Circuit Decision of Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc., the Court found three related Soft-Gel patents invalid for obviousness. The three patents describe a way to dissolve CoQ10 in monoterpenes for enhanced delivery to the body. The patents disclosed two suitable examples, limonene and carvone and derivatives thereof. However, prior to suit, the Patent Trial and Appeal B.......
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Post-Grant Reviews under the America Invents Act
January 05, 2017
Post by Blog Staff
The America Invents Act implemented the Post-grant Review (PGR) process as a new means of challenging existing patents. PGR differs from Inter Partes Review (IPR) in that PGR allows for a wider array of invalidity challenges. One example of a new challenge allowed under PGR is the ability to challenge the claims as being indefinite. However, Post-grant Review is only available for patents filed on or afte.......
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USPTO Data Visualization Center
November 10, 2016
Post by Jonathan L. Kennedy
Jonathon L. Kennedy Have you ever wondered how long the typical time before a first Office Action in a pending patent or trademark application is?  Or am I the only one waiting for some months after filing an RCE to have my patent application reexamined?  Or what is the average length of time a patent application or trademark application is examined before allowance?  The USPTO Data V.......
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Supreme Court Upholds Broadest Reasonable Interpretation and No Review for Institution in PTAB Proceedings
June 20, 2016
Post by Blog Staff
. The Supreme Court has issued its opinion in the case of In re Cuozzo Speed Technologies, LLC. In re Cuozzo initially began as an inter partes review (IPR) with the Patent Trial and Appeals Board (PTAB) where Garmin challenged the validity of Cuozzo's patent relating to an interface that uses GPS technology to display a vehicle's speed as well as the speed limit on the basis that Cuozzo's patent was.......
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Federal Circuit Reverses PTAB Obviousness Decision for the Board's Failure to Adequately Articulate an Obviousness Rationale
May 25, 2016
Post by Jonathan L. Kennedy
In Black & Decker, Inc. v. Positec USA, Inc., a non-precedential opinion, the Federal Circuit reversed the Patent and Trial Appeal Board's (PTAB) finding of obviousness of two claims.  The appeal arose from an Inter Partes Review (IPR) of U.S. Patent No. 5,544,417 owned by Black & Decker directed to a string trimmer.  The PTAB had instituted the IPR on two appara.......
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USPTO Issues Rule Amendments for Trials Before PTAB
April 07, 2016
Post by Blog Staff
The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, 2015, which pertain to inter partes review (IPR), covered business .......
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PTAB's Interpretation of 35 USC 315(b) Continues to Stand: Dismissal Without Prejudice Effectively Nullifies the One Year Bar to Bring an IPR
March 30, 2016
Post by Jonathan L. Kennedy
The USPTO's Patent Trial and Appeal Board's holding that the voluntary dismissal of a lawsuit, without prejudice, effectively nullifies the service of the complaint for purposes of triggering the one year bar in 35 U.S.C. § 315(b) to petition for the institution of an inter partes review (IPR) stands in Shaw Indus. Grp. v. Automated Creel Sys. after the Federal Circuit maintains that it does not have juri.......
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Federal Circuit Clarifies Rules for IPR Supplemental Information Submission
January 07, 2016
Post by Blog Staff
The Am The America Invents Act (AIA) created a number of new pseudo-litigation proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO.  While the proceedings, including inter-partes review (IPR), have been in place since September 16, 2012, the specific rules and procedures, as well as the underlying authority, continue to be resolved.  .......
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Streamlined, Expedited Patent Appeal Program for Small Entities Announced by USPTO
September 23, 2015
Post by Blog Staff
As of September 18, 2015, small or micro entities with only a single ex parte appeal pending before the Patent Trial and Appeal Board (PTAB) will be able to expedite review of their appeal in exchange for streamlining the process. According to the information provided on the USPTO website, the criteria for qualification for this new program include: The appeal must not involve any cl.......
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Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application
September 10, 2015
Post by Blog Staff
Paul S. Mazzola Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can constitute a prior .......
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The Continuing Saga of the First IPR at the Federal Circuit
July 09, 2015
Post by Blog Staff
    The Federal Circuit has simultaneously issued an order and an opinion in In re Cuozzo Speed Technologies, LLC, previously discussed on Filewrapper® as being the first appeal arising from an inter partes review ("IPR‚¬) . The order issued by the .......
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Alternative Patent Reform Legislation Proposed in Senate
March 06, 2015
Post by Blog Staff
Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years. The most visible legislative efforts have involved the "Innovation Act" proposed by Senator Goodlatte in 2013, and again in 2015. The version of the Innovation Act introduced in 2013 stalled out in the Senate, but has been re-introduced in the H.......
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Oral Arguments Held in Appeal of First IPR
November 18, 2014
Post by Jonathan L. Kennedy
By Jonathan Kennedy On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO. As noted in our previouspost, the appeal presents a number of interesting procedural and substantive issues. While the oral argument did not address all of the issues on appeal, the arguments from.......
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Federal Circuit Schedules Oral Hearing in First Appeal of Inter Partes Review
October 14, 2014
Post by Jonathan L. Kennedy
The Federal Circuit has scheduled oral arguments for the first appeal of an inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB"). Oral arguments have beenscheduled for November 3, 2014. The appeal involves a number of interesting issues. First, it arises from the first IPR filed with the PTAB—Garmin USA, Inc. v. Cuozzo Speed Technologies, LLC (IPR2012-0000.......
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Federal Circuit Weighs in on Stays for Post-Grant Review
July 24, 2014
Post by Blog Staff
The Federal Circuit has issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., providing clarification regarding how court should properly determine whether to stay litigation during later-requested post-grant PTO proceedings. Under the America Invents Act, a district court is permitted, but not required, to grant such a stay. The statute also provides a list of four factors that the district court is.......
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Federal Circuit Finds Clones Unpatentable
May 12, 2014
Post by Blog Staff
The Federal Circuit issued its opinion in In re Roslin Institute, a case involving cloned animals. The Roslin Institute (Roslin) owns a patent for methods of cloning animals, based on the work that created Dolly the Sheep. The inventors of that patent also assigned to Roslin an application claiming protection for the clones themselves. During prosecution, the USPTO deemed the claims to the clones contained in t.......
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"Insolubly Ambiguous" Standard not Applicable at the USPTO
May 09, 2014
Post by Blog Staff
InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the clai.......
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New and Useful - August 26, 2013
August 26, 2013
Post by Blog Staff
· InUniversity of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states. The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two paten.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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