From Respiratory Care to Power Plants: The PTAB on Analogous Art
By Albert Liou and Jen Bachorik - We recently wrote about the Federal Circuit’s 2020 decision in Donner Technology, LLC. v. Pro Stage Gear, LLC, where the Federal Circuit vacated the PTAB’s denial of an obviousness challenge due to its finding that the prior art was...
FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service
By Hannah Mehrle and Matt Johnson - A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc. d/b/a...
Conditional Offer to Abandon Claims Does Not Constitute Waiver to Assert
By Phillip Shelton* and Carl Kukkonen - According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable...
Machine Learning to Evaluate Genetic Data Held to be Patent Ineligible
By Carl Kukkonen and Stephanie M. Mishaga - The Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) finding that certain claims related to genetic inheritance data analysis are patent ineligible. The claims at issue sought to protect applying a...
PTAB Provides Notice Of Sua Sponte Motion to Amend Ground
By Sarah Brickey and Matt Johnson - The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was not...