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.
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Don’t Xerox conclusory assertions in the expert declaration
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…
Federal Circuit confirms that disavowal of claim scope must be “clear and unmistakable”
Whether in the patent’s specification or prosecution history, the disavowal of claim scopemust be “clear and unmistakable.”…
USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials
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…
More SAS: PTAB “May” Revoke Institution in Some Pending Trials
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…
PTAB Feeling SASsy: Institutions to Include “All Challenges”
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…
All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims
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…
USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews
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…
“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments
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.” …
Federal Circuit clarifies what IPR petition must disclose to provide adequate notice to Patent Owner
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…