PTAB Recognizes Limits to Eleventh Amendment Sovereign Immunity
By Joe Sauer and Dave Cochran In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the petitioners in...
Declarations as New Evidence to Overcome § 325(d)
By Bing Liang, Ph.D. and Cary Miller, Ph.D. We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...
Inherent Obviousness Means Element Is Necessarily Present, Not Just Obvious
By Emily Whitcher and Christian Platt In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness (here and here). Practitioners should also be aware of a recent Federal Circuit decision clarifying the...
Commission to Weigh in on IPR Estoppel
By Rich Fieman Originally Posted on Jones Day's ITC Blog at: http://jonesdayitcblog.com/ipr-estoppel/ The Commission has determined to review an initial determination finding that Respondent Ford is estopped under 35 U.S.C. § 315(e)(2) from asserting certain...
PTAB Denies CBM Institution Based on Technological Invention Exception
By Mike Lavine and Carl Kukkonen On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section 18 of the...