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...
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...