Precedential Decisions

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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…

Between March 7 and April 5, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated a series of decisions as either “precedential” or “informative.”  As part of its revised standard operating procedures (SOP2), the PTAB may designate an otherwise routine decision as precedential—a binding authority in subsequent matters involving similar facts…

On Friday, July 20, 2018, the Federal Circuit, in a precedential opinion, affirmed the Patent Trial and Appeal Board’s (“PTAB’s”) decision that tribal sovereign immunity does not apply in inter partes review (“IPR”) proceedings and that the U.S. Patent & Trademark Office (“USPTO” or “the Office”) has the authority to decide the validity of…

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…

No matter how groundbreaking, innovative, or brilliant the advance, innovators in mathematical techniques, particularly in the finance field, may think twice about seeking patent protection in view of the Federal Circuit’s recent precedential Section 101 decision in SAP America, Inc. v. Investpic, LLC, No. 2017-2081 (Fed. Cir. May 15, 2018).

There, claim 1…

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…

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…