On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s
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Petitioners’ Replies May Respond to Newly Raised Claim Constructions
Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response? In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7,
PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals
After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the
Patent Interferences May Not Involve Pure AIA Patent
The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is
Petitioner’s Analogous Art Argument was not so Obvious when Reversing the PTAB
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing
Patent Office Proposes Increasing AIA Trial Fees
The Patent Office’s Director recently notified the Patent Public Advisory Committee (PPAC) of the Office’s intent to set or adjust several fees that patent applicants, patent owners, and those challenging patents in AIA trials must pay. For applicants, this includes
PTAB Invalidates GUI, but Leaves Obviousness Test Gooey
On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious
Obvious Variants and the Hand of Fate
Collateral estoppel is a resource-saving shortcut. Judges consider it when an issue previously received sufficient judicial attention. And they apply it when the issue was resolved against the party now seeking, in some way, to circumvent that resolution. In the
No Weight for Unsupported Expert Witness Testimony
In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a
This Seems Absurd, but …
Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of