Swearing Behind a Prior-Art Reference Requires “Reasonably Continuous Diligence,” Not “Continuously Exercised Reasonable Diligence”
By Doug Pearson In a decision dated November 15, 2016, the Court of Appeals for the Federal Circuit vacated and remanded the PTAB’s decision in IPR2014-00233, in which the Board found (i) that Perfect Surgical Techniques, Inc. (“PST”), owner of U.S. Patent No....
Apple v. Ameranth: Federal Circuit Partially Reverses PTAB and Finds All Claims for Electronic Menus Unpatentable
By Carl Kukkonen and Stephanie Brooker On November 29, 2016, in Apple Inc. v. Ameranth, Inc. 15-1703, the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) findings of unpatentable independent claims in a Covered Business Method (CBM) review and...
Invalidity Defenses Raised but not Instituted During IPR Are not Barred by Statutory or Judicial Estoppel
By Lisamarie LoGiudice and Patrick Elsevier In Depomed, Inc. v. Purdue Pharma L.P. et al, 3-13-cv-00571, the District of New Jersey held that neither statutory nor judicial estoppel bars Purdue from continuing to assert invalidity defenses that were not instituted...
Judges Recommend En Banc Reconsideration of Federal Circuit Holding in Achates
By Joe Sauer In a November 17, 2016 non-precedential decision, a Federal Circuit panel again considered whether its holding in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) remains binding in view of the Supreme Court’s ruling in...
USPTO Presents Results of Post Grant Outcomes Pilot
In April 2016, the PTO launched its Post Grant Outcomes Pilot, an initiative to inform Examiners of relevant PTAB proceedings regarding patents related to an application (e.g., a continuation, divisional, continuation-in-part) that they are currently examining....