In inter partes review (IPR) proceedings, the PTAB will often uphold the validity of dependent claims despite finding the independent claim invalid. Dependent claims recite additional limitations that must be separately...more
Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously, patent owners must investigate and advocate for claim constructions for...more
Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition's application of KSR when asserting motivation to combine for an obviousness analysis. The Patent...more
11/13/2020
/ Claim Construction ,
Claim Limitations ,
Denial of Institution ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motivation to Combine ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No....more
The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D...more
7/7/2020
/ Claim Construction ,
Claim Limitations ,
Expert Testimony ,
Final Written Decisions ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Prior Art ,
Section 103
The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act...more
5/9/2018
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Comment Period ,
International Trade Commission (ITC) ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Standard of Review ,
USPTO
In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught...more