En Banc Federal Circuit Poised To Decide Important Question Concerning PTAB Appeals
By John Marlott The en banc Federal Circuit is currently considering whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar on IPR petitions can be reviewed on appeal. In Wi-Fi One v. Broadcom Corp, the en banc Court is set to decide the following...
Federal Circuit Holds Objective Indicia Must Be Linked to Novel Features
By J. Jason Williams and J. Patrick Elsevier, Ph.D. In Novartis AG v. Torrent Pharms. Ltd. (2016-1352), the Federal Circuit affirmed the PTAB’s decision in consolidated IPR proceedings (IPR2014-00784, IPR2015-00518) invalidating all claims of U.S. Patent 8,324,283. In...
Product-by-Process Claims Invalid when the Process Does Not Impart Structural or Functional Differences
By Kunyong Yang and Cary Miller, Ph.D. The PTAB issued a final written decision in IPR2016-00006, holding claims 1–22 of U.S. Patent No. 8,497,393 (“the ’393 patent”) unpatentable under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). All of the claims are...
PTAB Interprets “By Another” in 35 § 102(e)
By Amanda Leckman and Carl Kukkonen In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence, that...
A Single Bite at the Apple: The Board’s Discretion to Deny Institution under § 314(a)
By Albert Liou In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions, Inc. against Eagle View...