Knobbe/Martens: Intellectual Property Law

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TRADING TECHNOLOGIES INT'L, INC. V. IBG LLC

Before Moore, Mayer, and Linn.  Appeal from the Patent and Trial Appeal Board.

Summary: A graphical user interface that allows users to place orders for items (such as shares of stock) by moving icons onto displayed item prices is not patent eligible subject matter.

ATI TECHNOLOGIES ULC v. IANCU

April 12, 2019 Sean S. Kim and Christie Matthaei

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

Summary: Diligence requires “reasonably continuous diligence” and is not negated if the inventor works on improvements and evaluates alternatives while developing an invention. 

 

ARCTIC CAT INC. v. GEP POWER PRODUCTS, INC.

March 27, 2019 Shuchen Gong and Nicole R. Townes

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

Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural requirement, and only the body of the claim identifies an improvement, the applicant’s choice not to use the transitional phrase “wherein the improvement compromises” is also a “powerful reason” to deny the preamble any limiting effect.  Further, lack of diligence in reducing an invention to practice cannot be inferred when the invention was put into someone else’s hands for needed testing and there was diligent oversight. 

 

PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC.

March 8, 2019 Ashley C. Morales and Andrea Cheek

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

https://www.knobbe.com/attorneys/paul-stewartSummary: The mere fact that a certain thing may result from a given set of circumstances is not sufficient to demonstrate inherency.  Instead, the party alleging inherency must show that the natural result flowing from the operation as taught would result in the performance of the questioned function.

 

DR. FALK PHARMA GMBH v. GENERICO, LLC

February 21, 2019 Daniel A. Kamkar and Karen M. Cassidy

Before Lourie, O’Malley, Reyna.  Appeals from the Patent Trial and Appeal Board, United States District Court for the Northern District of West Virginia, and United States District Court for the District of New Jersey.

Summary: A firm’s representation of an indirect subsidiary of a parent corporation may create a disqualifying, concurrent conflict of interest for representation of a party adverse to a different indirect subsidiary of the parent corporation.

 

MOMENTA PHARMACEUTICALS, INC. v. BRISTOL-MYERS SQUIBB COMPANY

February 7, 2019 Jacob R. Rosenbaum and Jeremy Anapol

Before Newman, Dyk, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: An injury-in-fact is required to establish Article III standing for judicial review of agency action, even if a statute permits such review.

 

MYLAN PHARMACEUTICALS INC. v. RESEARCH CORPORATION TECH.

February 4, 2019 David J. Grant and Adam Powell

Before Lourie, Bryson, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision even if the initial petitioner does not appeal.

 

DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.

February 1, 2019 Mark E. Davis and Karen M. Cassidy

Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California.

Summary: A person is a joint inventor of the anticipating portions of a reference for the purposes of 35 U.S.C. § 102(e) when the person’s contributions to that anticipating portion are significant in view of the invention as a whole.

 

Perhaps Assignor Estoppel Survives at the PTAB…via the District Court

January 22, 2019 Scott R. Seeley and Benjamin Anger

A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB.  Assignor estoppel is applied to prevent a patent assignor (e.g., inventor) from challenging the validity of his or her own patent.  Recently, the Federal Circuit in Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792, 793 (Fed. Cir. 2018) blessed the PTAB’s refusal to apply this doctrine, allowing inventors to pursue an IPR against his or her own patent in an IPR.  In contrast, inventors are often barred in district court cases from challenging the validity of their own patent under assignor estoppel.  Yet, recently in AgroFresh Inc. v. MirTech, Inc., CV 16-662-MN-SRF, the magistrate judge granted AgroFresh’s request to file an early motion for summary judgment asserting assignor estoppel that would prevent the PTAB from issuing a Final Written Decision, thus representing a potential end-run around the PTAB’s refusal to consider the doctrine.

 

AMERIGEN PHARMACEUTICALS v. UCB PHARMA GMBH

January 14, 2019 Bita Kianian and Nicole R. Townes

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

Summary: A generic pharmaceutical company had standing to appeal the Board’s decision in an IPR that claims of a patent were not obvious even though it may be incapable of maintaining a parallel Hatch-Waxman suit because it demonstrated a controversy traceable to the patent and redressable by the Court.  

 

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