Knobbe/Martens: Intellectual Property Law

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VIRNETX INC., v. APPLE, INC.

December 10, 2018 Alexander D. Zeng and Christie Matthaei

Before Newman, O’Malley, and Chen.  Appeal from the PTAB.

Summary: Patent Owner Vertnetx Inc. (“Virnetx”) was collaterally estopped from arguing that a reference was not a printed publication because the Federal Circuit had already determined the reference was a printed publication in a Rule 36 judgement in a separate but related appeal.

 

ENPLAS DISPLAY DEVICE CORP. v. SEOUL SEMICONDUCTOR CO.

November 19, 2018 Aaron S. Johnson and Mark Kachner

Before Newman, Hughes, and Stoll. Appeal from the United States District Court for the Northern District of California.

Summary: Reasonable royalty patent damages cannot include a royalty for sales of non-accused products.

 

HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC

November 19, 2018 David C. Kellogg and Karen M. Cassidy

Before Reyna, Wallach, and Taranto.  Appeal from the Patent Trial and Appeal Board

Summary:  A party must file a cross-appeal when their argument requires modification of a decision. Under the APA, the final claim construction need not be identical to the proposed claim construction, so long as it is similar enough that the parties had reasonable notice and an opportunity to be heard.

 

ARISTA NETWORKS, INC. v. CISCO SYSTEMS, INC.

November 12, 2018 Benjamin Ho and Andrea Cheek

Before Prost, Schall, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The plain language of 35 U.S.C. § 311(a) unambiguously leaves no room for assignor estoppel to apply in the IPR context.

 

 

 

ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.

November 7, 2018 Noorean I. Gill and Adam Powell

Before Prost, Moore, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary:  Omitting a transition phrase between the preamble and the body of a claim does not cause terms in the preamble to limit the scope of the claim.

 

YEDA RESEARCH AND DEVELOPMENT CO., LTD. V. MYLAN PHARMACEUTICALS INC. & TEVA PHARMACEUTICALS USA, INC. V. SANDOZ INC.

October 15, 2018 Ari Feinstein and Karen M. Cassidy

Before Judges Reyna, Bryson, and Stoll.  Appeals from the Patent Trial and Appeal Board and the United States District Court for the District of Delaware.

Summary:  Non-prior art evidence may be considered when evaluating the knowledge, motivations, and expectations of a POSITA regarding the prior art. In addition, there is no categorical rule in pharmaceutical patent cases precluding obviousness determinations in the absence of a pharmacokinetic and pharmacodynamics profile.  Finally, it is not error to apply an “obvious to try” analysis where there are a limited number of permutations of dose and frequency not already disclosed in the prior art. 

 

 

NATURAL ALTERNATIVES INT’L, INC. V. IANCU

October 2, 2018 Brandon G. Smith and Adam Powell

Before Prost, Moore, and Reyna.  Appeal from the Patent Trial and Appeal Board

Summary: Removing the priority claim of one application in a chain can affect the ability of pending and subsequently filed applications to claim priority to earlier applications. 

 

BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT COMPANY

September 28, 2018 Ashley C. Morales and Andrea Cheek

Before Lourie, Clevenger, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: 35 U.S.C. § 315(b), which prohibits the Board from instituting an IPR based on a petition filed more than one year after the date on which the petitioner is served with a complaint, is fully applicable to complaints that are involuntarily dismissed by the court.

 

E.I. DUPONT DE NEMOURS & CO. V. SYNVINA C.V.

September 18, 2018 Mark Rubinshtein, Ph.D. and Nicole R. Townes

Before Lourie, O’Malley, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior art, the burden shifts to the patentee to come forward with evidence of nonobviousness.  This burden-shifting framework is applicable both in the context of district court cases and inter partes review proceedings.

 

PARKERVISION, INC. v. QUALCOMM INCORPORATED

September 14, 2018 Josepher Li and Andrea Cheek

Before O’Malley, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary:  While obviousness of apparatus claims “capable of” a particular function may be shown by identifying a prior art reference that discloses an apparatus capable of performing the claimed function, obviousness of related method claims requires a motivation to actually use the prior art apparatus for the claimed function.

 

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