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Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically

Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one...more

PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of...

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more

PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious

For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of...more

Federal Circuit Clarifies Standard for Prior Art in Obviousness Analysis

Earlier this week, the Federal Circuit in Circuit Check Inc. v. QXQ, Inc. clarified the standard by which a reference may be considered prior art for the purposes of an obviousness determination. See No. 2015-1155, Slip. Op....more

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