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
John D. Higgins
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 Grants a Rare Rehearing in Cook Medical, LLC v. Boston Scientific Scimed, Inc
By John D. Higgins on
Posted in PTAB Decisions
As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse…
Further Guidance on Claim Construction in Owens Corning v. Fast Felt Corp.
By John D. Higgins on
Posted in Appellate Decisions
Remands and reversals of the Board are relatively rare. Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1] Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged…