In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. LTD., 2016-2321 (Fed. Cir. August 22, 2017)(designated precedential), the Federal Circuit upheld the PTAB’s finding that a patent directed to an HVAC system was invalid. However, a concurring opinion criticized the PTAB’s joinder practice and use of expanded panels, indicating that such practices
Soumya P. Panda
When Is It Too Late to Settle a Post-Grant Proceeding?
By Soumya P. Panda on
Posted in About the PTAB
A difference between post-grant proceedings (i.e., inter partes review and covered business methods) and its predecessor (i.e., ex parte and inter partes reexaminations) is the ability for parties in post-grant proceedings to settle and request termination of the proceedings. Both federal statutory authority and USPTO rules govern the nature of settlements…
How Many References Is Too Many for Challenging a Patent on Obviousness?
Posted in About the PTAB
The PTAB does not appear to have weighed in, one way or another, on the question of how many references is too many for an obviousness challenge under 35 U.S.C. § 103—at least not explicitly. Implicitly, the PTAB has regularly instituted inter partes review of patents where four or more references have been used to…
New Rules for Post-Grant Proceedings
By Martin M. Zoltick & Soumya P. Panda on
Posted in About the PTAB
The United States Patent and Trademark Office (USPTO) recently enacted new rules for post grant proceedings before the Patent Trial and Appeal Board (PTAB). (Federal Register, vol. 81, No. 63, at pp. 18750-18766, April 1, 2016). The new rules were formulated from public comments to proposals published in August 2015 and a series of PTAB…