Federal Circuit to PTAB – No 102 Gap Filling
By Dave Cochran In a precedential opinion dated March 14, 2017, the Federal Circuit reversed the PTAB, holding that in finding a claim anticipated under 35 USC § 102, the Board cannot “fill in missing limitations” simply because a skilled artisan would immediately...
Including Functional Claim Language Helped Save Pozen’s VIMOVO® Patents
By Bing Liang, Ph.D. and Cary Miller, Ph.D. On February 28, 2017, the PTAB held that the petitioner Lupin had not shown that the challenged claims in two of Pozen’s patents were invalid (IPR2015-01773 and IPR2015-01775). These cases show the advantage of using...
In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee
The PTAB rejected an obviousness challenge brought against a patent directed to methods for preparing the known compound 2,5-furan dicarboxylic acid.
Internet Advertising Claims Deemed Not Eligible for Covered Business Method Patent Review
By Vishal Khatri and Carl Kukkonen In a decision dated February 27, 2017, the Board denied institution of Google Inc.’s petition for Covered Business Method Patent Review of claims 20, 21, 23–26, 28, and 29 of U.S. Patent No. 6,128,651 (“the ’651 patent”) owned by...
Where Party Joined Pending IPRs, Delaware Takes Broad View of § 315 Estoppel
By Geoffrey Gavin In Parallel Networks Licensing, LLC v. International Business Machines Corporation, No. 1:13-cv-02072, Dkt. No. 366 (D. Del. Feb. 22, 2017) (Slip Op.), the court held IBM was estopped from asserting obviousness under §103 based on prior art...