Fallout from the Fintiv Precedential Decision
JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional ... What Now?
The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more
Axonics petitioned for IPR of two patents owned by Medtronic. The challenged claims relate to a neurostimulation lead and a method for implanting and anchoring the lead. The patents’ “Field of the Invention” section states...more
In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...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
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
IN RE: IPR LICENSING, INC., - Before O’Malley, Newman, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR...more
On appeal from a Patent Trial and Appeal Board (PTAB) finding of non-obviousness, the US Court of Appeals for the Federal Circuit found that a petitioner could not raise an “entirely new rationale” for combining two...more
The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer. The claims...more
The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more
Addressing the issues of teaching away and commercial success, the US Court of Appeals for the Federal Circuit remanded a case to the Patent Trial and Appeal Board (PTAB) to reconsider its final written decision issued in one...more