Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers
By: John Marlott – The PTAB elaborates on § 315(a)(3), considering Patent Owner’s argument that a DJ plaintiff in district court seeking a DJ of non-infringement is not estopped from filing IPR after filing a counterclaim for DJ of invalidity in reply to Patent Owner’s counterclaim of infringement.
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.