In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination
By Christian Damon and John Marlott In a prior post we compared the different standards for claim indefiniteness applied by courts in litigation and by the USPTO during pre-issuance and post-issuance proceedings. Another of our previous posts profiled a real-world...
Federal Circuit Rules in Favor of Public Interest Group Standing at PTAB
By Stephanie Brooker and Carl Kukkonen In Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (Fed. Cir. Aug. 7, 2017), the Federal Circuit reviewed a Patent Trial and Appeal Board (“PTAB”) decision invalidating claims of U.S. Patent No. 8,112,504...
PTAB Requires Identification of Structure for Function for Means-Plus-Function Terms
By Vishal Khatri and Dave Cochran In a decision dated August 17, 2017, the PTAB denied institution of Kingston Technology Company, Inc.’s petition requesting inter partes review of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of U.S. Patent No. 6,088,802 (“the ‘802...
Expanded PTO Panels and Improper Joinder: The Federal Circuit Fires a Warning Shot
By Joseph M. Sauer The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels. Procedural History The procedural...
Handling Improper Coaching of Witnesses During PTAB Deposition Proceedings
By Joe Beauchamp Many attorneys have encountered an opposing party’s witness that provides very concise, supportive responses to the questions of the witness’s own attorney after a recess in a deposition. Often, these helpful responses occur during re-direct of the...