In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity
Patent
Challenging Pharmaceutical Patents, New Arrows in the Quiver?
By Aydin H. Harston on
Posted in About the PTAB
Since the Federal Circuit’s October 5, 2017 decision in Amgen Inc. v. Sanofi[1] overruling the so-called “newly characterized antigen” test for written description under 35 U.S.C. 112, patent challengers in the pharmaceutical and biotechnology fields have gained powerful tools for attacking antibody claims for lack of adequate written description. More broadly, patent challengers are…
Miami International Holdings Files Nearly Half of CBM Petitions Filed So Far This Year
By Spencer J. Johnson on
Posted in About the PTAB
Making up only around 7% of post-grant trials at the PTAB (according to statistics released by the USPTO from February 2018), the number of petitions for Covered Business Method (“CBM”) reviews has experienced a decline every year since its peak in 2014. With 34 filings in 2017,[1] the 16 filed so far this year…
Patent Examiners Will Get a Head Start with Automated Prior Art Searches
By Caitlin M. Wilmot on
Posted in About the PTAB
On Thursday, March 15, 2018, Commissioner for Patents, Andrew Hirshfeld, announced that the USPTO is making progress on its “Access to Prior Art Project,” which will serve as an automated tool to identify relevant prior art early in the review process.[1] The goal of the project is to increase patent examination quality and efficiency…
When Does a Reference Disclose a Recited Range with Sufficient Specificity to Constitute an Anticipation of the Claim?
By John D. Higgins on
Posted in PTAB Decisions
In Titanium Metals Corp. v. Banner[1], the Federal Circuit notably held that it is “an elementary principle of patent law” that when a claim recites a numerical range, the claimed range is anticipated by a prior art reference that discloses a point or an example within that range. Accordingly, when seeking to anticipate…
PTAB Finds that Tribal Sovereign Immunity Does Not Apply to Review Proceedings
By Mark T. Rawls & D. Lawson Allen on
Posted in PTAB Decisions
The Patent Trial and Appeal Board (“the PTAB”) ruled last Friday, February 23, 2018, that tribal sovereign immunity does not apply to the Saint Regis Mohawk Tribe. The issue has been percolating for months. For more background on the issue, see these previous blog articles – Tribal Sovereign Immunity: The New Defense Against IPRs? and…
In Re Hodges – Federal Circuit Rules PTAB Must Sufficiently Explain Its Factual Findings
By Andrew J. Storaska on
Posted in Appellate Decisions
On Monday, February 12, 2018, the Federal Circuit reversed the Patent Trial and Appeal Board’s (“the Board”) anticipation rejections and vacated and remanded the obviousness rejections against U.S. Patent Application No. 12/906,222 (“the ’222 application”), an application directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and…
Federal Circuit Revives Polaris’ Claims After PTAB’s Obviousness Analysis Veers Off Course
By Aydin H. Harston on
Posted in Appellate Decisions
On February 9, 2018, in vacating and remanding parts of an obviousness decision, the Federal Circuit found that the Patent Trial and Appeal Board (“PTAB” or “the Board”) erred in parts of its analysis of motivation, teaching away, and commercial success in cancelling all claims of Polaris’ U.S. Pat. No. 8,596,405 (“the ’405 patent”) in…
Not All GUIs Are Created Equal Under USPTO Guidelines and Alice
By Jennifer B. Maisel on
Posted in About the PTAB
The United States Patent and Trademark Office (USPTO) published new and updated guidelines on subject matter eligibility on February 5, 2018, including a quick reference sheet on decisions holding patent claims eligible and identifying abstract ideas, an index of examples, and a chart of subject matter eligibility court decisions.
One update to note in the…
Federal Circuit Holds That PTAB May Issue Adverse Judgments Prior to an Institution Decision
By Nicole M. DeAbrantes on
Posted in Appellate Decisions
On January 24, 2018, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”), finding that 37 C.F.R. § 42.73(b) allows the PTAB to enter an adverse judgment prior to an institution decision when the patent owner disclaims all of the challenged claims. In Arthrex, Inc. v. Smith & Nephew, Inc.…