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.
For Substitute Claims, “Possession is Nine-Tenths of the Law”
By: Emily Tait – The PTAB elaborates on the standard for analyzing compliance with the written description requirement when considering the patentability of substitute claims during inter partes review.
PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative
By: Mike Lavine – Key takeaways from the PTAB’s March 21, 2018 press release designating its Kayak Software and Becton decisions as informative.
Statutory Estoppel Only Applies To The Same Patent Claims
By: Sue Gerber – The PTAB considers whether estoppel under 35 U.S.C. § 325(e)(1) applies to decisions involving similar, but not the exact same, patent claims.
Anticipation by Combining Elements from the Four Corners of a Reference
By: Albert Liou – The PTAB provides guidance on establishing anticipation by combining elements of different embodiments from four corners of a single prior art reference.