Intellectual Property > IP Newsflash
15 Feb '17

The Patent Trial and Appeal Board (PTAB or “Board”) granted a petitioner’s request for rehearing and modified its Final Written Decision finding an additional claim unpatentable. Previously, the PTAB issued a Final Written Decision holding that the petitioner demonstrated by a preponderance of the evidence that Claims 1, 4, 10 and 11 of U.S. Patent No. 6,026,059 (related to generating a bin of traces from seismic survey data) were unpatentable as anticipated by the prior art. The petitioner, however, failed to meet the evidentiary standard for finding Claims 2, 3 and 5 unpatentable. The petitioner filed a request for rehearing, challenging the Board’s determination regarding Claim 2 of the challenged patent.

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01 Feb '17

In a final written decision, the Patent Trial and Appeal Board (PTAB) found that claims 1-20 of U.S. Patent No. 8,550,271 (the “’271 patent”) were not unpatentable because “compelling evidence of secondary considerations of non-obviousness” outweighed the evidence of obviousness. World Bottling Cap LLC (“Petitioner”) filed inter partes review petitions of Crown Packaging Technology Inc.’s (“Patent Owner”) ’271 patent, which covers a bottle cap requiring less material than caps in the prior art by using a harder steel that allows for a thinner cap.

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29 Jul '16

In a rare complete reversal of the Patent Trial and Appeal Board, the Federal Circuit held that the Board clearly erred in shifting the burden of proving obviousness to the patent owner. McClinton had filed a petition for inter partes review against Magnum's patent relating to hydraulic fracturing (fracking). The Board found that the patent was invalid for obviousness based on three references. 

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15 Jul '16

In a July 7 final written decision, the Patent Trial and Appeal Board (PTAB) found all but one claim of a Mallinckrodt Hospital Products patent—U.S. Patent No. 8,846,112—unpatentable under 35 U.S.C. §§ 102(a) and 103(a). The ’112 Patent is directed to “methods of distributing a pharmaceutical product comprising nitric oxide gas.”

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14 Apr '16

Because “the asserted grounds of unpatentability for [the disputed] claim [] in this case [were] based on prior art, not indefiniteness[,]” the Patent Trial and Appeal Board (PTAB) upheld the validity of a claim over petitioner’s prior art, despite the PTAB knowing that a district court had found the claim indefinite and that, because of that indefiniteness, the petitioner could not point to anticipatory structure in the prior art reference.

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24 Mar '16

Clearlamp, LLC filed a patent infringement action against LKQ Corporation (LKQ), who, in turn, counterclaimed seeking declaratory judgments of noninfringement and invalidity. During the pendency of this case, the parties participated in an inter partes review (IPR), during which the Patent Trial and Appeal Board found that several claims of the patent-at-issue were unpatentable as obvious in view of three prior art references. In the instant opinion, the Court grants LKQ’s motion for summary judgment on invalidity and denies the parties’ remaining motions on validity and noninfringement. The key issue addressed by the Court in deciding these summary judgment motions was whether LKQ was estopped under 35 U.S.C. § 315(e)(2) from combining the datasheet of a prior art product, which was not raised during the IPR proceeding, with the three prior art references used to invalidate other patent claims.

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15 Mar '16

The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) determination of unpatentability for claims covering new rules for a card game. The panel found the claims patent-ineligible under the Mayo two-step analysis for 35 U.S.C. § 101. First, they were directed to an abstract idea; second, they lacked an inventive concept sufficient to bridge the gap between abstract idea and invention.

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29 Jan '16

The PTAB has recently designated two of its prior decisions as precedential. These are only the second and third decisions from AIA reviews to be designated as such by the Board. The first decision, LG Electronics Inc. v. Mondis Tech Ltd., relates to the meaning of the term “served with a complaint” in 35 USC § 315(b). In its decision denying institution of LG’s IPR petition, the Board held that LG’s petition, filed within one year of Mondis’s second complaint, but more than a year after Mondis’s first complaint alleging infringement of the patent at issue, fell outside of the one-year time bar for filing an inter partes review. The Board declined “LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’ into the statute,” and instead interpreted “a complaint” plainly as any complaint. LG had also argued that the settlement agreement following the first lawsuit did not cover all of its accused products and that, following dismissal of that suit, the parties were left in the same legal position with respect to the “unreleased products” as before the complaint was filed. The Board rejected that argument, finding that at least some of the claims were dismissed with prejudice, and it was LG’s decision to exclude products from its settlement.

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