Director Issues Guidance on Use of AI for Documents Submitted to PTAB
By Carl Kukkonen, Stephanie M. Mishaga, and Pranita Dhungana - USPTO Director Katherine K. Vidal issued guidance on February 6, 2024 regarding the use of AI in drafting materials submitted to the USPTO’s administrative boards, including the PTAB. Of biggest concern...
En Banc Federal Circuit Questions Standard for Design Patent Obviousness
By Jesse Wynn and John Evans – Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked tough...
Federal Circuit Affirms Claim Construction and How It Applies
By Luke Cipolla, Matt Silveira, and Matt Johnson - In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged...
PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art
By Connor Scholes, Owen Carpenter, Bill Devitt, and Dave Maiorana - In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be...
Reverse Engineered Search Insufficient For IPR/PGR Estoppel
By Tom Ritchie - In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review (PGR)...