Fed. Circuit Cautions Against Narrow Application of Analogous Art Test
By Matt Johnson - One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). The scope of...
PTAB Issues Guidance With Regard to AAPA
By Carl Kukkonen - On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA). Under 35 U.S.C. § 311(b), IPRs may be instituted only "on the basis of prior art consisting of patents or printed publications." The...
Joinder Bid After Prior Petition Denial Fails
By Matt Johnson - After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in October of that year in...
District Court Issues Sanctions for Patent Owner’s Shapeshifting Arguments at the PTAB
By Matt Johnson – Although infrequently awarded, district courts are empowered to issue sanctions for behavior at the PTAB that they deem “exceptional” under Octane Fitness. In Game and Technology Co., Ltd. v. Wargaming Group Limited, district court defendant and...
Final FY 2020 PTAB Statistics Posted
By Matt Johnson - Total PTAB petitions remained flat in FY2020, with 1513 petitions total being filed: IPR (1429), PGR (64), and CBM (20), compared to 1464 in FY2019 and 1613 FY2018, down from 1901 in FY2017. September IPR petition filings were 4th highest for the...