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Overlooked PTAB Cases: Raising Nonobviousness Evidence

Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court. The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more

Withholding of Evidence Related to Offer for Sale, Filing False Declaration and Coercion by Patentee Support Finding of...

The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more

COVID-19: The Response from Colleges and Universities

Colleges and universities across the United States are taking action to protect staff, students and faculty from COVID-19 and prevent further community spread of the illness. Notably, in an effort to reduce population density...more

Cancellation of Patent Claims through Reexamination Insufficient to Mount Collateral Attack on Multimillion-Dollar Jury Verdict

Judge Gilstrap in the Eastern District of Texas has denied defendants’ motion to stay the post-trial phase of a patent infringement litigation pending ex parte reexamination where the request for reexamination was filed four...more

Withdrawal of Petitioner from IPR Proceeding All But Ensures Success in Contingent Motion to Amend

On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more

Bar to File IPR Triggered by Declaratory Judgment Action, Even if Complaint Was Dismissed Without Prejudice

In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an...more

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

District Court Adopts Narrow Reading of Shaw and Finds that IPR Estoppel Applies to Manuals for Prior Art Products

Last year, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. articulated that a petitioner is not estopped from relying on a ground on which the Patent Trial and Appeal Board (PTAB) declined...more

Cross-Examination Is Not Authorized as Routine Discovery Where the Relied-Upon Testimony Is from an Underlying Litigation

On January 30, 2017, the Patent Trial and Appeal Board (PTAB or “the Board”) granted in part the petitioner’s motion to strike various declarations of a named inventor because the patent owner failed to make him available for...more

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