Posts Tagged: "prima facie"

No blanket prohibition against the introduction of new evidence during an inter partes review

There is no blanket prohibition against the introduction of new evidence during an inter partes review proceeding, indeed new evidence should be expected. A petitioner can introduce new evidence following the petition, if it is a legitimate reply to evidence introduced by the patent owner, or if the new evidence is used to show the level of knowledge skilled artisans possess when reading the prior art references identified as grounds for obviousness.

Reasonable Expectation of Success to the Rescue

In the last several months, lack of a reasonable expectation of success was a major factor in the reversal of two obviousness rulings by the Federal Circuit. One originated from the Patent Trial and Appeals Board (“Board”) (In Re Stepan Company, Aug. 25, 2017) (“In re Stepan”) and the other from a district court Genzyme Corporation v. Dr. Reddy’s Lab., Dec. 18, 2017, (“Genzyme”). In re Stepan emphasizes that reasonable expectation of success requires a motivation to do more than simply vary all parameters or try all possible choices until success is achieved. In Genzyme, the Court explained that a hypothesis presented in passing in a reference, without more, is not enough for an ordinarily skilled person to have a reasonable expectation of success. While In re Stepan has relevance for patent applicants facing conclusory obviousness rejections, Genzyme is cautionary for patent challengers banking too heavily on isolated, unsupported statements as a basis for obviousness.

TTAB Agrees with Parents Everywhere: Children do not hold the Control—Noble House v. Floorco

Subsidiaries of larger companies who are preparing to file a trademark application may want to think twice before deciding who to list as the Applicant. In April 2016, The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) issued a precedential decision canceling the trademark registration of a subsidiary because the parent company was the only one using the mark… Given the outcome of this cancellation action, companies with multiple entities should be on alert. Companies should first confirm that the entity actually using and controlling the mark is the one listed on the registration. If not, to avoid cancellation of the trademark, the entities should consider entering into a trademark license or an assignment.

In re Lovin: The Examiner’s Answer is Too Late To Make a Proper Rejection of Dependent Claims

Lovin has received exceptional attention in the patent law blogosphere. In short, Lovin permits an examiner to wait until an examiner’s answer to explain how and why dependent claims are rejected. What’s worse, Lovin permits the examiner to require the applicant to provide a substantive reason for patentability before the examiner explains the rejection. The Federal Circuit is considering whether to hear In re Lovin en banc, and indeed they should rehear Lovin en banc. The Federal Circuit should defend the applicant’s right to receive a meaningful explanation of claim rejections before the applicant is required to rebut the rejections.