Word Games At The PTAB
By Kenny Luchesi In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words. The USPTO stated that this change...
Reference Reasonably Pertinent to One Problem Deemed Analogous Art
By Rich Graham and Joe Sauer Section 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” but longstanding precedent couches this question of fact in terms of “whether the art is analogous or not.” See In re...
PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art
By Geoffrey Gavin In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination. Fox Factory, Inc. v. SRAM, LLC,...
District Court Considers IPR In Deciding Alice Motion
By Doug Clark and Christian Platt On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. § 101. ...
The Federal Circuit Criticizes A PTAB Partial Institution
By Dave Maiorana The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week after the Supreme Court...