Knobbe/Martens: Intellectual Property Law

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ARENDI S.A.R.L. v. GOOGLE LLC

February 21, 2018 Nicole R. Townes and Douglas B. Wentzel

Before Newman, Bryson, and Moore.  Appeal from the Patent Trial and Appeal Board.

Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner confirmed the reasons for allowance.

 

Toyota Requests Adverse Judgment After University of Minnesota is Dismissed from IPR on the Basis of Sovereign Immunity

February 13, 2018 Peter Law and Kerry S. Taylor, Ph.D.

A closely watched case on sovereign immunity, Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, has now been terminated by the patent owner’s request for adverse judgment.

 

Federal Circuit's Treatment of Alleged APA Violations at the PTAB

February 12, 2018 Kerry S. Taylor, Ph.D. and Scott R. Seeley

Attorneys Kerry S. Taylor, Ph.D. and Scott R. Seeley authored "Federal Circuit's Treatment of Alleged APA Violations at the PTAB" which was published in the January 31, 2018 edition of Westlaw Journal Intellectual Property.

Read the full article below.

In re: Hodges

February 12, 2018 Mark Kachner and Ashley C. Morales

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

Summary:  The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation, without further explanation, is insufficient to support a finding of anticipation.

 

POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.

February 9, 2018 Karen M. Cassidy and Nathan D. Reeves

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

Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s], discredit[s], or otherwise discourage[s]” modifying the prior art in the manner claimed.

 

IN RE: NORDT DEVELOPMENT CO., LLC

February 9, 2018 Adam Powell and Josepher Li

Before Moore, Taranto, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: In a product-by-process claim, terms that can be equally understood as structural or process limitations should generally be construed as structural limitations. 

 

ELBIT SYSTEMS OF AMERICA, LLC v. THALES VISIONIX, INC.

Before Moore, Wallach, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB is entitled to weigh the credibility of expert witnesses, and attorney argument cannot be used as evidence to rebut actual admitted evidence.

 

MAXLINEAR, INC. v. CF CRESPE LLC

January 25, 2018 Nicole R. Townes and David J. Grant

Before Dyk, Schall, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary: Final written decisions by an administrative tribunal invalidating a patent can have a preclusive effect.

Post-Institution Disclaimer Insufficient to Avoid CBM Review

January 25, 2018 Scott Raevsky and Scott R. Seeley

The PTAB has determined that a patent owner may not moot a CBM proceeding by disclaiming claims post-institution. Emerson Electric Co. v. SIPCO, LLC, CBM2016-00095, Paper 39 (P.T.A.B. Jan. 16, 2018). 

ARTHREX, INC. v. SMITH & NEPHEW, INC.

January 24, 2018 Mark Kachner and Daniel A. Kamkar

Before Newman, Dyk, and O’Malley.  Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB may enter an adverse judgment against a patent owner where, before issuing an institution decision on an IPR petition, the patent owner disclaims all challenged claims but does not request adverse judgment.

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