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Ordinary Meaning: “Identifying” Doesn’t Mean Detecting; It Means Identifying

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decisions finding one set of challenged claims patentable and another set of challenged claims in the same patent unpatentable. The...more

Obvious to Try Requires Reasonable Expectation of Success Tethered to Claimed Invention

Addressing obviousness in the context of method of treatment claims using particular drug dosages, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) final written decision holding...more

Article III Standing Required to Appeal Final Decisions by the PTAB

Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an...more

Retroactive Application of IPRs to Pre-AIA Patents is not Unconstitutional Taking

The US Court of Appeals for the Federal Circuit addressed for the first time whether the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is an unconstitutional taking...more

PTAB Decision in Separate Case Collaterally Estops Patent Owner

The US Court of Appeals for the Federal Circuit affirmed-in-part, vacated-in-part and remanded a district court’s rulings on validity, finding that the patent owner was collaterally estopped from asserting certain patents as...more

Wands Analysis Required to Establish Lack of Enablement in PGR Eligibility Review

Addressing the threshold question of whether a patent is eligible for post-grant review (PGR), the Patent Trial and Appeal Board (Board or PTAB) denied institution of the PGR because the petitioner had not adequately...more

Patent Owner Extinguishes IPR by Amending Claims

In a rare case where the Patent Trial and Appeal Board (PTAB) granted a motion to amend the claims in an inter partes review (IPR), the patent owner successfully canceled all claims subject to review by changing the...more

Factual Findings Required to Show “Apparent Reason to Combine”

Addressing issues of obviousness and anticipation in the context of an inter partes review, the US Court of Appeals for the Federal Circuit issued two decisions with respect to the same patent, vacating and remanding the...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

No Rehearing on Dual Use PTAB Panels

Confirming that the same panel of judges at the Patent Trial and Appeal Board (PTAB or Board) has the authority to institute America Invents Act (AIA) reviews and make a final determination on the merits, the US Court of...more

“Substantial Evidence” Review Dooms PTAB Appeal - Merck & Cie v. Gnosis S.P.A.

Addressing the issue of obviousness in the context of an inter partes review (IPR), the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) under a...more

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