In Synopsys, Inc. v. Mentor Graphics Corp., a split Federal Circuit panel held that final written decisions in IPR proceedings need not address all claims challenged in the petition. Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016).
In its
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.
Latest from Patent Challenges - Page 4
Federal Circuit rules that PTAB failed to adequately describe its reasoning for obviousness finding
In a recent decision vacating the PTAB’s obviousness findings in an IPR, the Federal Circuit set forth criteria necessary to support future obviousness findings. Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316 (Fed. Cir. Jan. 22, 2016) (nonprecedential).
In its…
Federal Circuit rules that PTAB has full discretion to deny request to file motion for supplemental information
A unanimous Federal Circuit panel recently affirmed the PTAB’s decision denying a Petitioner’s request to file a motion to submit an expert report as supplemental information under 37 C.F.R. § 42.123(a). Redline Detection, LLC v. Star Envirotech, Inc., No. 15-1047 (Fed. Cir. Dec.
Federal Circuit weighs in again on reviewability of institution decisions
In a recent case affirming the PTAB’s final decision of invalidity, the Federal Circuit held that it lacks jurisdiction to review whether the Board improperly instituted a CBM Review on a ground not asserted in the petition. SightSound Techs., LLC…
Federal Circuit approves having same PTAB panel make both institution and final decisions in IPR proceedings
In affirming a PTAB ruling that the challenged patent was invalid for obviousness, a split Federal Circuit panel recently held that neither the America Invents Act nor the Constitution precludes the same PTAB panel that made the decision to institute…
Federal Circuit holds that PTAB is not bound by findings made in Institution Decisions
A unanimous Federal Circuit panel recently affirmed the PTAB’s judgment holding that the Petitioner failed to satisfy its burden of proving that the challenged claims of the patent were obvious. TriVascular v. Samuels, No. 15-1631 (Fed. Cir. Feb. 5, 2016)…
PTAB denies patent owner’s motion to request a certificate of correction
A patent owner who wishes to use a certificate of correction to correct an alleged defect in a patent subject to a pending IPR must first obtain authorization from the PTAB before a request for certificate of correction can be…
PTAB denies request for termination, finding it amounted to a motion to stay
In PNC Bank NA v. Parus Holdings, Inc., the PTAB denied the Parties’ joint request for authorization to file a motion to terminate because the requested “termination” would merely amount to a stay of proceedings pending appeal in an underlying District Court…
Refused Cross-Examination Results in PTAB Striking Non-Party Witness Declaration
In HTC Corp. v. NFC Tech., LLC, the PTAB granted the Petitioner’s motion to strike and expunge the declaration of the Patent Owner’s non-party witness, who refused to submit to cross-examination. IPR2014-01198, Paper 41 (Nov. 6, 2015).
The Patent…
PTAB provides guidance on demonstrating public accessibility of prior art
The familiar standard for anticipation under 35 U.S.C. § 102 states, in part, that a “person shall be entitled to a patent unless” the claimed invention was “described in a printed publication . . . or otherwise available to the…