In its decision, the Federal Circuit noted that the PTAB is entitled to strike arguments improperly raised in a reply brief under 37 CFR § 42.23(b). However, the appellate court disagreed that Ericsson raised a new theory in its reply brief and thus the Board erred in not considering those portions of the reply brief. “The Board’s error was parsing Ericsson’s arguments on reply with too fine of a filter,” the Federal Circuit found. Ericsson’s petition for IPR described how a person with ordinary skill in the art would be familiar with the concept of interleaving. The CAFC further found that the PTAB’s error was exacerbated by the fact that the new claim constructions proposed by Intellectual Ventures after institution gave rise to the significance of interleaving in the proceeding. In light of this, the Federal Circuit found that Ericsson deserved an opportunity to respond to the new construction.
August 31, 2018
On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial and Appeal Board (PTAB) that affirmed a patent examiner’s obviousness rejection of a microwave vacuum-drying apparatus and associated method. The Federal Circuit panel consisting of Judges Alan Lourie, Jimmie Reyna and Raymond Chen…
June 6, 2018
Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time to file a Reply Brief has run. See 37 CFR 41.35(a). What this means is the patent examiner, in order to frustrate the applicant’s ability to have the Board hear a case, can simply refuse to file an Examiner’s Answer and instead reopen prosecution. This happens all too frequently in some Art Units.
July 20, 2016
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