Last week, the Federal Circuit issued a decision in Ingenico Inc. v. IOENGINE, LLC resolving a longstanding district court split by holding that IPR estoppel does not extend to system art “in public use, on sale, or otherwise available to
Patent Challenges
Analysis of USPTO post-issuance proceedings
The Patent Challenges blog, published by Norton Rose Fulbright, focuses on legal developments and strategic considerations related to patent validity disputes, including inter partes review (IPR) proceedings and patent litigation. It covers topics such as estoppel issues in patent challenges, claim construction standards, expert testimony in patent trials, and Federal Circuit decisions impacting patent scope and obviousness. The blog also addresses procedural aspects of patent trials before the Patent Trial and Appeal Board (PTAB), including rule changes and discretionary denials. It provides analysis of how patent law principles apply to technical fields like multiprocessor systems and digital assets, offering insights into patent enforcement and defense strategies.
Blog Authors
Latest from Patent Challenges
A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness
A claim that recites a combination of prior art elements may be obvious when the combination merely involves the use of a “known technique” that “has been used to improve one device” to “improve similar devices in the same way.”…
Don’t Xerox conclusory assertions in the expert declaration
Expert testimony can be critical to support or defend against invalidity challenges in AIA trials, but must be adequately explained to be effective. In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Feb. 10, 2023), Director Vidal affirmed…
Federal Circuit confirms that disavowal of claim scope must be “clear and unmistakable”
Whether in the patent’s specification or prosecution history, the disavowal of claim scopemust be “clear and unmistakable.”…
USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials
In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials.…
More SAS: PTAB “May” Revoke Institution in Some Pending Trials
The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note…
PTAB Feeling SASsy: Institutions to Include “All Challenges”
The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will…
All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims
The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 U.S. ___, No. 16-969 (2018). Thus, the…
USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews
In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. v…
“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments
In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d). That statute provides that the board may reject a petition if “the…