Topic
Secondary Considerations
9 published works
IP Update
Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art
The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even…
Global IP & Technology Law Blog
When the PTAB Weighs Evidence of Secondary Considerations, Volume Matters
As discussed in a prior blog post here, the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) designated a recent decision on secondary considerations as…
PTABWatch
Don’t Save New Fish to Fry in Reply
In Henny Penny Corp. v. Frymaster LLC (Fed. Cir. 2019), the Federal Circuit again upheld the PTAB’s application of its rule prohibiting petitioners from raising new arguments in a reply…
PTABWatch
Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims
In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in…
PTABWatch
Secondary Considerations of Non-obviousness Retain Some Vigor
IPR 2015-01651 involved a dispute over the obviousness of claims in U.S. Patent No. 8,551,271 owned by Crown Packaging Technology, Inc. and drawn to a grooved crown bottle cap with…
PTABWatch
PTAB Accords Little Weight to Evidence without Analysis or Explanation
The PTAB recently issued a final written decision in an inter partes review (IPR), refusing to cancel claims in Verinata Health, Inc.’s U.S. Patent No. 8,318,430. Ariosa Diagnostics v. Verinata…
PTABWatch
Secondary Considerations Error Does Not Warrant Reversal
As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently…
PTABWatch
Secondary Considerations Finally Found to be Persuasive
In what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding. In Phigenix,…
IP Intelligence
Patent Watch: Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.
Where a court holds a claim obvious without making findings of secondary considerations, the lack of specific consideration of secondary considerations ordinarily requires a remand. On August 6, 2013, in…