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No Motivation to Combine Necessary Where Secondary Reference Only Explains Primary Reference

The US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding of obviousness over a patent owner’s challenge to the “combination” of prior art, explaining that no motivation to combine...more

PTAB Need Not Consider Prior Art of Record Not Relied on in IPR Petition

The US Court of Appeals for the Federal Circuit upheld an inter partes review (IPR) determination that challenged claims were not obvious over two references asserted in requestor’s IPR petition without consideration of other...more

“Specific Reference” Required to Claim Priority

Addressing the issues of priority and incorporation by reference, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s) prior art rejection of a patent based on the priority date...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

PTAB Denies Institution Where Claim Indefiniteness Precludes Application of Prior Art to the Claims

The Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review (IPR) after determining that the challenged claims were indefinite and that therefore the Board could not apply the prior art to...more

PTAB Petition Must Specifically Explain the Grounds for Invalidity - Apple Inc., v. ContentGuard Holdings, Inc.

In a trio of orders addressing the extent of express explanation required in a petition for post-grant review, the Patent Trial and Appeal Board (PTAB or Board) found each petition defective for lack of explanation regarding...more

Getting It Right the First Time

United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co. - Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize...more

IP Update, Vol. 16, No. 4, April 2013

Obviousness-Type Double Patenting May Exist When There Is Neither Common Ownership nor Common Inventorship - Addressing an obviousness-type double patenting rejection, the U.S. Court of Appeals for the Federal Circuit...more

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