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The Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB” or “the Board”) ruling that invalidated three patents in three separate IPR proceedings (IPR2015-00325, IPR2015-00326, and IPR2015-00330).  The patent owner, ATI Technologies, asserted that the inventions in the challenged claims antedated the asserted prior art.  That is, ATI attempted to swear behind the asserted

When a non-patent literature (NPL) reference is used to challenge a patent, a key issue to be resolved is whether the NPL reference is a “printed publication” under 35 U.S.C. § 102. Several prior posts have addressed this question, such as here and here.

The Federal Circuit recently, on November 6, weighed in yet

Based on recent Patent Trial and Appeal Board (“PTAB” or “the Board”) decisions, the best practice to establish an academic thesis as a printed publication in an IPR proceeding is to demonstrate that it has been indexed by subject matter and then corroborate the index date by independent evidence, or demonstrate that another publication can

Typically, the Patent Trial and Appeals Board (PTAB) is thought to disfavor non-patent literature—that is, “printed publications” under 35 U.S.C. § 102(b) that are not patents, patent publications, or patent applications.

To the extent that this is true, it most likely stems from the fact that members of the PTAB are, by training, used to

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

The Patent Trial and Appeal Board (“PTAB”) enjoys a wide range of discretion on a number of issues.  For instance, the PTAB has interpreted 35 U.S.C. § 314(a) as providing the Director with the discretion to institute or not, regardless of whether there is a reasonable likelihood that the petitioner will prevail on at least

The Federal Circuit recently changed the scope of CBM eligible patents. While the Patent Trial and Appeals Board (PTAB) had previously interpreted its jurisdiction broadly, the Federal Circuit, in two recent decisions, considerably narrowed the universe of patents eligible for CBM review. This post analyzes the results of those decisions as they have played out