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...
USPTO Proposes Expanding Opportunities for Non-Registered Practitioners
By Zachary Marshall-Carter, Daniel Sloan, and Matt Johnson - The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the...
PTAB Denies IPR Petition for Failure to Construe Claims
By Lauren Kim and Matt Johnson - The PTAB recently denied 10x Genomics, Inc.’s (Petitioner) IPR petition (IPR2023-01299) against President and Fellows of Harvard College (Patent Owner) challenging claims of U.S. Pat. No. 11,098,303. Patent Owner identified itself and...
En Banc Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness
By John Evans and Jesse Wynn - The en banc Federal Circuit has overruled the Rosen-Durling test for design patent obviousness, holding that the Supreme Court’s KSR decision dictated “a more flexible approach . . . for determining non-obviousness.” LKQ v. GM, ---...