Draft Your Patents Carefully
By: Danial Kazhdan and Vishal Khatri – In this cautionary tale, the Federal Circuit considers a IPR decision invalidating claims of a patent in view of a related PCT application based on the PTAB’s determination that the patent’s priority claim was defective.
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It’s Obvious: POSA Could Write Software To Generate Conference Call Requests
An April 2018 PTAB decision that considers a petitioner’s arguments that the knowledge and skill that accompany the education and experience of one of skill in the art can support a finding of obviousness.
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Prior Art Chemical Structures Must Be More Than A “Code Name”
By Cary Miller, Ph.D. – A recent PTAB decision considers post-filing evidence that a prior art chemical known to the public by its code name demonstrated a claimed chemical structure was inherently taught by the prior art.
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Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers
By: John Marlott – The PTAB elaborates on § 315(a)(3), considering Patent Owner’s argument that a DJ plaintiff in district court seeking a DJ of non-infringement is not estopped from filing IPR after filing a counterclaim for DJ of invalidity in reply to Patent Owner’s counterclaim of infringement.
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Not So Secondary: Overcoming Obviousness With Objective Indicia
By: Rich Graham and Dave Cochran – A recent PTAB decision provides practitioners a road map illustrating how to maximize the effectiveness of evidence relating to objective indicia of non-obviousness in a post grant proceeding.
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