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Physical Products Cannot Form Basis of an IPR

On May 1, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) of U.S. Patent No. 11,140,841 in the case of Aardevo North America, LLC v. Agventure B.V. The patent in question, owned...more

USPTO Announces Request for Comments: AI's Impact on Prior Art and the PHOSITA

The USPTO is seeking public input on whether prior art must be authored by humans and how, if at all, AI-generated disclosures should be treated differently from non-AI generated disclosures....more

General Plastic Factors Lead to Institution Denial

The Patent Trial and Appeal Board (PTAB) in Videndum Production Solutions, Inc. v. Rotolight Limited (IPR2023-01219), recently denied a petition for inter partes review (IPR) of a patent on a lighting system and control for...more

PTAB Issues Guidance With Regard to AAPA

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

PRECEDENTIAL: IPRs and Examination have Different Standards for Establishing a Printed Publication

As was previously noted, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more

Collateral Estoppel Applied by District Court Following IPR on Similar Patents

In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more

Federal Circuit Affirms Trade Conference Catalog Qualifies As Prior Art

On September 13, 2018, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) that the claims in U.S. Patent 8,714,977 (the ‘977 patent) are unpatentable as...more

Protecting Artificial Intelligence and Big Data Innovations Through Patents: Functional Claiming

The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more

When is a Conference Paper Publicly Accessible: Lessons Learned

In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

PTAB Denies CBM Institution Based on Technological Invention Exception

On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

District Courts Split on Admissibility of Patent Owner IPR Victories

In an opinion dated October 12, 2017, the U.S. District Court for the Eastern District of Wisconsin granted a motion in limine to exclude evidence that a challenged patent had survived twenty post-issuance proceedings,...more

Five-Judge PTAB Panel Interprets “Module” As Non Means-Plus Function

On September 13, 2017, the PTAB, a five-judge panel, granted a petition to institute an inter partes review brought by HTC America, Inc. (“Petitioner”) against Virginia Innovation Sciences, Inc. (“Patent Owner”) regarding...more

PTAB Interprets “By Another” in 35 § 102(e)

In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence,...more

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