Director Vacates Decision Based on Improper Claim Construction
By Hannah Mehrle and Matt Johnson - The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...
PTAB Issues First Post-LKQ Design Patent Decision
By Connor Scholes and John Evans - On August 6, 2024, the PTAB issued its first written decision applying a new test for obviousness of design patents. In Next Step Group, Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (P.T.A.B. Aug. 6, 2024) (“Decision”), the...
Lack of Injury In Fact Scuttles Appeal
By Lexi Heon, Lisamarie LoGiudice, and Matt Johnson - The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to...
Secondary Considerations Arguments Precluded By Prior Nexus Testimony
By Fabian Bramwell,* Daniel Sloan, Jen Bachorik, and Matt Johnson - On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70...
Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication
By Connor Scholes and John Evans - In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was offered...