LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO
By John Evans, Jesse Wynn, and Erin Bies* - Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...
Shifting Burden Dooms Patent Owner
By Hailey Stewart,* Evan Tassis and Matt Johnson - In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc....
Fees Incurred in Voluntary Parallel IPR Unrecoverable
By Lisa Furby, Zachary Marshall-Carter, and Matt Johnson - On May 20, the Federal Circuit held fees incurred in voluntary parallel IPR proceedings were not recoverable under 35 U.S.C. § 285. Dragon Intell. Prop. LLC v. DISH Network L.L.C., No. 2022-1621, slip op. at...
Director Vidal Reels In Discretionary Denials Under Section 314(a)
By Sue Gerber and Matt Johnson - Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent was filed...
Federal Circuit Finds Application of Printed Matter Doctrine Too Expansive
By Chris Dorsett and Lisa Furby - During an inter partes review (IPR) initiated by Ingenico, the PTAB found certain claims from three patents held by IOEngine to be unpatentable. The patents at issue are directed to secure communications for portable devices used with...