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Patent Challenges
By Norton Rose Fulbright Visit the blog
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Patent Challenges
System Art: Goodbye IPR Estoppel, Hello Fintiv Denials
By Lu Ling (US), Michael Pohl (US), Eagle Robinson (US)
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…
Patent Challenges
A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness
By Michael Pohl (US), Vlada Wendel (US)
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…
Patent Challenges
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,…
Patent Challenges
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.”
Patent Challenges
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…
Patent Challenges
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…
Patent Challenges
PTAB Feeling SASsy: Institutions to Include “All Challenges”
By Tom Owens (US), Eagle Robinson (US)
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…
Patent Challenges
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…
Patent Challenges
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…
Patent Challenges
“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…