Knobbe/Martens: Intellectual Property Law

Benjamin Anger

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February 6, 2018 Benjamin Anger and Jacob R. Rosenbaum

Before Dyk, Wallach, and Hughes.  Appeal from the United States District Court for the District of Delaware.

Summary:  A distribution agreement qualifies as an invalidating “offer for sale” under 35 U.S.C. § 102(b) when the terms of the agreement demonstrate the commercial character of an offer to sell the patented product.


PTAB Designates as Precedential the General Plastics Decision on Follow-On Petitions

October 19, 2017 Benjamin Anger

On October 18, 2017, the PTAB designated as “precedential” a major portion of its prior decision in General Plastic Industrial Co., Ltd. v. Canon Kabushki Kaisha. The decision was previously designated “informative,” but now, as a “precedential” decision, binds all members of the Board.

The Eastern District of Texas Again Broadly Applies IPR Estoppel and Finds a Joined Party in the IPR Is Also Subject to Estoppel

A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard (“HP”) should be estopped from asserting invalidity grounds that HP did not raise, but reasonably could have raised, during IPR proceedings.

PTAB Designates as “Informative” Expanded PTAB Panel Decision Adopting the Seven NVIDIA Factors For Evaluating Follow-On Petitions

September 20, 2017 Benjamin Anger and David T. Kim

The PTAB’s Chief Administrative Patent Judge and Deputy Chief Administrative Patent Judge joined an expanded PTAB panel that adopted the seven NVIDIA factors and denied institution of the Petitioner’s follow-on petitions in General Plastic Industrial Co., Ltd., v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. September 6, 2017). The PTAB designated the decision as “Informative” on September 18, 2017.

How to Lose an IPR but Amend Your Claims in Reexam and Keep Your Patent

September 13, 2017 Daniel A. Kamkar and Benjamin Anger

On August 30, 2017, the PTAB issued a Final Written Decision in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper 43 (P.T.A.B August 30, 2017), entering adverse judgement on the original patent claims because those claims no longer existed in light of patentably distinct claims obtained by the Patent Owner in a concurrent ex parte reexamination.


PTAB Grants Rare Supplemental Motion to Amend on Remand from Federal Circuit

July 27, 2017 Mark E. Davis and Benjamin Anger

On remand from the Federal Circuit, the PTAB granted Veritas’s Supplemental Motion to Amend for one substitute claim and denied the motion with respect to a second claim in Veeam Software Corporation v. Veritas Technologies LLC, IPR2014-00090, Paper 48 (P.T.A.B. Jul. 17, 2017).

PTAB Grants-in-Part Rare Motion to Amend Based on Unexpected Results

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper 37, (P.T.A.B. June 20, 2017). 

PTAB Not Barred from Using Patent Owner Submissions as a Basis for Holding Claims Unpatentable

The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11, 2017).

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that Microsoft raised or reasonably could have raised during IPR proceedings.

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company brochures as prior art in a follow-on IPR petition.  The PTAB held that at the time of JM’s earlier IPR petition, the brochures would not have been found by a reasonably skilled searcher conducting a diligent search.

PTAB Considers What Constitutes “By Another” Under § 102(e) in Determining Whether Challenged Claims are Unpatentable

March 31, 2017 Benjamin Anger and Vikas Bhargava

In a final written decision in Duncan Parking Tech., Inc. v. IPS Group Inc., IPR2016-00067, Paper 29 (P.TA.B. Mar. 27, 2017), the PTAB evaluated whether a prior art reference alleged to anticipate the challenged patent under 35 U.S.C. § 102(e) was a patent “by another.” 

Federal Circuit Affirms PTAB’s Holding of Obviousness in Google’s IPR Against Michael Meiresonne

March 8, 2017 Neil G. Anderson and Benjamin Anger

The Federal Circuit affirmed the PTAB’s final written decision holding that claims from Michael Meiresonne’s patent were obvious in Meiresonne v. Google, Inc., Case No. 16-1755 (Fed. Cir. Mar. 7, 2017).

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