by Geoffrey Gavin | Jun 24, 2018 | Federal Circuit
By: Geoffrey K. Gavin Last week, the Federal Circuit granted, in part, a panel rehearing request and remanded an IPR to the PTAB in view of SAS to address claims that were not initially instituted by the Board. Broad Ocean Tech., LLC v. Nidec Motor Corp., No....
by Marc S. Blackman | Jun 7, 2018 | Claim Construction, Federal Circuit, PTAB Trial Basics
By: Marc S. Blackman Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s claims, viewed in...
by Matthew Johnson | Jun 5, 2018 | Federal Circuit, Federal Circuit Appeal
By: Matt Johnson We have previously discussed the ramifications of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the PTAB cannot institute an IPR on only some of the petitioned claims. One open question was what the Federal Circuit...
by Albert Liou | May 30, 2018 | Estoppel, Federal Circuit
By: Albert Liou In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several times in the recent past. ...
by Greg Castanias | May 1, 2018 | Federal Circuit, Time Limits
By: Jason M. Garr, John Marlott, and Greg Castanias By statute, an IPR cannot be instituted if the petitioner, real party in interest, or its “privy” was sued for infringing the patent more than one year before the petition for the IPR. 35 U.S.C. § 315(b). As we...
by Vishal Khatri | Apr 22, 2018 | Federal Circuit
By: Vishal Khatri Droplets, Inc. v. E*TRADE Bank, No. 16-2504 (Fed. Cir. Apr. 19, 2018), is a cautionary tale on the need for careful patent prosecution. Because of an error in the priority claim, Droplets lost its right to claim an earlier effective filing date, and...
