Secondary Considerations Again Fail to Shore Up Patent Estate

By | PTABWatch | August 16, 2017
In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco’s challenge on grounds of obviousness.   In its final written decision, the Board held claims 13, 17, and 18 of U.S. Patent No. 6,944,905 obvious.  IPR 2016-00039, discussed here, is another Board decision holding obvious several claims of U.S. View Full Post
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Fairness in Evaluation: Federal Circuit Remand Back to Board for Failure to Fully Consider Petitioner’s Arguments Against Motion to Amend

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims challenged in IPR2015-00208.  During the IPR, Patent Owner Tire Hanger conceded that the original claims were unpatentable and filed a motion to add “human involvement to steps that an apparatus or other structure could have otherwise performed,” to the claimed method to “temporarily maintain a vehicle wheel during removal and reinstallation.” Id. View Full Post
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PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?

By | PTABWatch | August 1, 2017
In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. View Full Post
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Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit

By | PTABWatch | July 31, 2017
The PTAB recently canceled the University of Pennsylvania’s U.S. Patent No. 7,625,558, a potentially fatal blow to the University’s suit against Eli Lilly and Company alleging its cancer therapeutic Erbitux® (centuximab) infringes the patent.  Eli Lilly and Co. v. Trustees of the Univ. View Full Post
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Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By | PTABWatch | July 27, 2017
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial proceedings at the PTAB.  View Full Post
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Statement of Agreement or Disagreement with Attorney Argument Alone Does Not Provide Substantial Evidence to Support PTAB Findings

By | PTABWatch | July 26, 2017
In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  View Full Post
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Pending Supreme Court and En Banc CAFC Decisions

By | PTABWatch | July 19, 2017
Pending Supreme Court Decisions The Supreme Court will decide during its October 2017 term “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” Oil States Energy Services, LLC v. View Full Post
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