Posts Tagged: inter partes reexamination


Issue Preclusion, PTAB, and the Split Federal Circuit: Knowles Electronics v. Cirrus Logic

Under the status quo, neither the patentee nor the public is able to rely on judicial determination of an issue that might later be taken to the …

PCT Species Claim Sufficient to Support Priority Claim of Later-filed Genus Claim

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light …

Federal Circuit Affirms PTAB’s Rejection of Claims Despite Earlier CAFC Validation

Although the majority opinion was silent with respect to a prior claim construction by the Federal Circuit relating to the patent, Judge Newman wrote in dissent that …

Amicus Brief Advocating Against Tribal Sovereign Immunity Filed in PTAB Proceedings

The motion of the St. Regis Mohawk Tribe (“the Tribe”) is based on the misplaced theory that Tribal Sovereign Immunity is applicable to administrative proceedings before the …

Amendments in IPRs? Welcome back to the future

The industry reaction to Aqua Products v. Matal has been swift. In IPWatchdog’s Industry Roundup blog post, there was broad acclaim. However, for those involved with …
By Van Lindberg
4 years ago 10

Burden of Persuasion for Patentability of Amended Claims in IPR Stays with Petitioner

After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph …

A Look Back at the Legislative Origin of IPRs

Those now familiar with IPR proceedings will already have recognized how little resemblance current IPR proceedings have to what most supporters of the AIA envisioned upon its …
By Phil Johnson
4 years ago 30

Federal Circuit Upholds the Board’s Invalidation of Southwire Patent

The Court found that the Board did not provide an adequate explanation for finding that the “30%” limitation was inherent in the reference, as a predicate for its …

CAFC Vacates and Remands Inconsistent Rulings by the Board on Validity of two SynQor Patents

The Board failed to address all grounds for proposed rejections under the APA by ignoring certain arguments made by Vicor during the reexamination. Additionally, the Board failed …

Inquiry into Unexpectedness is Essential Even for Determining Obviousness in Inherency

The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation …

Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s …

Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required

A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not …

PTAB’s Claim Construction Regarding Means-Plus-Function Limitation Was Erroneous

The Federal Circuit vacated and remanded the Board’s finding of obviousness of certain challenged claims based on a means-plus-function limitation, affirmed the Board’s finding of …

CAFC may consider whether an inter partes reexamination was properly instituted based on the presence or withdrawal of a party

In re AT&T Intellectual Prop. II, L.P., Appellant AT&T Intellectual Property II, L.P. (“AT&T”) appealed from a final decision of the Patent …

Cisco Successfully Invalidates Patent for Lack of Written Description

Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, …