Opening a Can of Worms for Design Patent Obviousness?
By Kerry Barrett and John Evans Design patent obviousness requires a heavy threshold burden of proof. Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design. Below is an example of...
District Court Stays After SAS – Simplified Or Not?
By John Marlott After SAS, does institution of an IPR make a district court more or less likely to stay a parallel litigation? Maybe, maybe not. In its April 2018 decision in SAS Institute v. Iancu, the U.S. Supreme Court ruled that the PTAB cannot take a selective,...
PTAB Precedential Decision Recap
The PTAB has been very active in designating decisions precedential and informative in 2019. Here's a recap of designations so far: Real parties in interest, 35 U.S.C. §§ 312(a)(2), 322(a)(2) Precedential - Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001,...
PTAB Applies Statutory Grace Period to Filing of Continuing Applications
By Catharina Chin Eng and Matt Johnson The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op. at...
Panel Including Director Iancu Institutes Unchallenged Petition for IPR
By Mike Lavine and Matt Johnson On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system and is owned...