PTAB Issues First Post-LKQ Design Patent Decision
By Connor Scholes and John Evans - On August 6, 2024, the PTAB issued its first written decision applying a new test for obviousness of design patents. In Next Step Group, Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (P.T.A.B. Aug. 6, 2024) (“Decision”), the...
Lack of Injury In Fact Scuttles Appeal
By Lexi Heon, Lisamarie LoGiudice, and Matt Johnson - The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to...
Secondary Considerations Arguments Precluded By Prior Nexus Testimony
By Fabian Bramwell,* Daniel Sloan, Jen Bachorik, and Matt Johnson - On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70...
Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication
By Connor Scholes and John Evans - In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was offered...
Institution Denied for Failure to Show Disclosure in Provisional Application
By David Linden and Dave Maiorana - On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment, LLC...