Federal Circuit Holds That PTAB Cannot Shift Burden onto Patent Owner to Prove Non-obviousness
On July 25, 2016, the U.S. Court of Appeals for the Federal Circuit issued a decision in In re Magnum Oil Tools International, Ltd., reversing the U.S. Patent Trial and Appeal Board’s (“PTAB”) decision in an inter partes review and holding that the PTAB improperly...
Federal Circuit Opens the Door to Use of Evidence by the Patent Trial and Appeal Board (PTAB) Beyond the Four Corners of the Petition
Current understanding of the PTAB process holds that a party’s petition challenging a patent must contain all evidence and arguments for institution that the party plans to present; otherwise, anything not included in the petition is forfeited. This understanding may...
PTAB Grants ContentGuard’s Motion to Amend and Finds Amended Claim Substantially Identical for Purposes of Intervening Rights
On June 21, 2016, the PTAB issued a Final Written Decision in CBM2015-00040 (consolidated with CBM2015-00160) where both Google and Apple challenged the patentability of ContentGuard's U.S. Patent No. 7,774,280, entitled "System and Method for Managing Transfer of...
Federal Circuit Rules That The PTAB Cannot Adopt A New Claim Construction In A Final Written Decision Without Giving The Parties An Opportunity To Address That New Construction: SAS Institute Inc., v. ComplementSoft, LLC
The PTAB sometimes changes its claim constructions during the course of an inter partes review or a covered business method review. When it does so, according to the Federal Circuit’s recent holding in SAS Institute Inc. v. ComplementSoft, LLC, __ F. 3d __ (Fed. Cir....
Pending Patent Trial and Appeal Board’s (PTAB) Final Written Decision Does Not Require Stay and Does Not Justify Rule 60 Relief: WesternGeco LLC v. ION Geophysical Corp.
On May 4, 2016 Magistrate Judge Dena Hanovice Palermo denied ION Geophysical Corp.’s motion for stay and recommended that the District Court deny ION’s request for relief under Rule 60(b)(6) after the Patent Trial and Appeal Board found certain of the claims...