Posts in Patent Trial and Appeal Board


Are conflicts of interest at the PTAB leading to preferential decisions for Apple?

The lead APJ serving on the panel of multiple CBM reviews petitioned by Apple, who also wrote the final written decision on at least one CBM review …
By Steve Brachmann
22 hours ago 4

Recent court rumblings about a narrow scope of IPR estoppel

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent …
By Mitchell Feller
1 day ago 2

Why the Unified Patents Model Would Not Work in China

Unified Patents is a relatively new form of patent troll that works as a “Troll of Trolls” or “ToT.” They file IPRs (inter-partes reexamination requests) to kill …
By Erick Robinson
3 days ago 16

Fixing America’s Patent System is the Best Strategy to Jump-Start our Stalled Economy

Fixing America’s patent system is necessary for meaningful economic growth for America’s workers and America’s global competiveness over countries like China. Not surprisingly, Judge …
By Eli Mazour
5 days ago 19

Refusal to institute IPR based on reference does not preclude use of reference for motivation to combine

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision finding a patent owned by Novartis AG and Mitsubishi Tanabe Pharma Corp. (collectively “Novartis”) to …

Studying IPRs Not Enough, PTAB must be Repaired, Replaced or Repealed by Congress

Inter Partes Review (IPR) is viewed by many as late-stage destruction of fully developed early-stage investor ROI in patented property. The Lee study will presumably weigh the …
By Chris Gallagher
10 days ago 23

Federal Court validity decisions do not bind the PTAB

On appeal, Novartis argued that the PTAB unlawfully reached different conclusions than the Federal Circuit and U.S. District Court for the District of Delaware in addressing …

How to improve IPRs without tossing the baby out with the bath water

It is clear that the current regulations are almost exclusively focused § 316(b)’s “the ability of the Office to timely complete proceedings” and not the other language …
By Russell Slifer
18 days ago 61

Is It Really That Obvious? A Tale of Two Decisions

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen …
By William Gvoth & Paul Gurzo
20 days ago 3

How IPR Gang Tackling Distorts PTAB Statistics

If you are having trouble figuring out how Zond could have had 371 claims, lost all of them, but only 1,220 claims were instituted out of 1,377 claims challenged, you …
By Peter Harter & Gene Quinn
24 days ago 5

Other Barks for Wednesday, April 5th, 2017

Google tries to strike a “patent peace” with a new cross-licensing initiative for Android developers. The Federal Circuit is petitioned for review of a judgment in a …
By Steve Brachmann
24 days ago 1

Federal Circuit OKs PTAB invalidating patent claims prior litigation confirmed as valid

Patent claims being adjudicated valid in federal district court and then being killed in an administrative proceeding at the PTAB is exactly the problem so many of …
By Gene Quinn
25 days ago 23

CAFC: A reference that requires significant modification will not anticipate and invalidate that claim

The Federal Circuit noted that precedent requires a prior art reference to disclose the invention without modification in order to anticipate. “[A] prior art reference that must …

Taking stock of the health of the American patent system, a system in crisis

“In our time together today we are going to try and take stock of the health of the American patent system,” Michel began. “It is important to …
By Gene Quinn
1 month ago 31

Federal Circuit Reverses PTAB Anticipation Decision and Clarifies Kennameta

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an …