Knobbe/Martens: Intellectual Property Law

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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.

 

UC v. Broad Institute: No Interference-In-Fact in CRISPR Genome Editing Applications

On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no interference-in-fact between the University of California (UC)’s application and the claims of twelve patents and one application owned by the Broad Institute.

 

IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.

September 11, 2018 David J. Grant and Adam Powell

 

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

Summary: Claims may be rejected under 35 § U.S.C. 103 based on implicit disclosures of a prior art reference.

 

WORLDS INC. V. BUNGIE, INC.

September 7, 2018 Daniel Kiang and Karen M. Cassidy

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

Summary: The PTAB may initially accept an IPR petitioner’s identification of real-parties-in-interest, but if and when a patent owner produces evidence disputing the identification, the burden is on the petitioner to demonstrate that the correct real-parties-in-interest were identified.

 

Recent Update on Patent Trial Practice Guide

August 28, 2018 Jane Xia and Eric Furman, Ph.D.

The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board (‘‘Board’’). The original Trial Practice Guide was published in 2012 at the same time as the promulgation of AIA Trial Rules. The Trial Practice Guide contains informative material of standard practices in front of the Board, and outlines procedures during AIA trials.  The recent update incorporates the Board’s current practices and changes in applicable regulations.

 

ERICSSON INC. V. INTELLECTUAL VENTURES I LLC

August 27, 2018 Jordan E. Gottdank and Mark Kachner

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

Summary: The Board must consider arguments in an IPR petitioner’s reply, where the arguments expressly follow from the petition, do not rely on new references or rationales, and are necessary to address an issue that arose after institution.

 

IN RE MAATITA

August 20, 2018 Daniel P. Hughes and Karen M. Cassidy

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

Summary:  A two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness requirements for a design patent. 

 

LUMINARA WORLDWIDE, LLC v. IANCU

August 20, 2018 Hans L. Mayer and Andrea Cheek

Before Lourie, Dyk, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary:  The section 315(b) time-bar for IPRs applies even when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice.

 

IN RE: POWER INTEGRATIONS, INC.

August 17, 2018 Raj D. Pai, PhD. and Andrea Cheek

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

Summary: A writ of mandamus cannot be used as an alternative means of obtaining appellate review of institution decisions in IPRs, since Congress specifically prohibited such review in 35 U.S.C. § 314(d).

 

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