Same or Similar Art Mutes IPR Petition on Medical Device Patent
By Dave Cochran - 35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination, reexamination, or a...
CAFC Holds PTAB May Not Cancel Claims For Indefiniteness In An IPR
By Sue Gerber and Matt Johnson - The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., --- F.3d ---, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not cancel...
PTAB Permits Extra Briefing to Evaluate Request for Rehearing
By Levent Herguner and Matt Johnson - In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic AS,...
Federal Circuit Reluctantly Applies Arthrex Decision
By Mike Lavine and Matt Johnson - On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the remedy of...
PTAB Statistics Through Q1 2020
By Matt Johnson – The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through December 31, 2019) stands at 55% compared to 63% in the previous fiscal year. While a small sample size (138 instituted, 113 denied), this is a number that we...