Provisional Describes “Incompressible Solid” Despite Disclosure Of “Little” Compression
By Albert Liou - In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada...
Fintiv Factor 3 Centers on Degree of Investment, Not Substantive Arguments
By Emily Tait and Adriane Elinski* - In a recent decision, the PTAB granted institution of an IPR despite multiple parallel district court proceedings involving the same patent, and flatly rejected the Patent Owner’s argument that the Petitioner’s “conflicting”...
Rosen-Durling Test Back on the Table
By John Evans, Vishal Khatri, and Jesse Wynn - In February, the Federal Circuit declined to modify or overrule its long-standing test for obviousness in design patents, the Rosen-Durling test, despite arguments that the Supreme Court overruled it in KSR v. Teleflex. ...
Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations
By Ashvi Patel, Adam J. Cook,* and Josh Nightingale - On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held...
Motion to Amend: Much to Admire?
By Alex Li and Matt Johnson - Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant reviews (PGR)...