• January 27, 2017
      In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or...
    • October 06, 2016
      It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090).  In view of the PTAB’s recent denial, Veritas appealed to...
    • September 26, 2016
      When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued.  The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director...
    • September 02, 2016
      On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas...
    Patent Office Trials Blog
    • 1/25/2017
    • 12/20/2016
      The Court of Appeals of the Federal Circuit issued a Decision on December 20, 2016, upholding four PTAB rulings (IPRs 2014-01026, 01079, 01101, and 01202) in favor of Sughrue client NHK Seating of America, Inc. In the Decision, the Court affirmed the PTAB’s findings that certain claims in 4 patents owned by Lear Corp. and directed to active head restraint systems for automobiles, were unpatentable. The patents at issue were U.S. Patent Nos. 5,378,043; 6,631,949; 6,655,733; and 6,631,955.

    • 12/9/2016
      Sughrue has once again made it among the elite patent litigation firms to make the "Top Tier" rank in the annual U.S. News and World Report Best Lawyers rankings. Sughrue was recognized in the Best Law Firm top tier rankings in the areas of Intellectual Property Litigation and Patent Litigation. Sughrue has obtained the coveted “Tier 1” ranking for four consecutive years.

      Best Lawyers is the oldest and most prestigious peer-review publication in the legal profession. Attorneys are peer-nominated and evaluated by a panel of attorneys within their practice area. Nominations are put through a rigorous evaluation process which includes client feedback regarding responsiveness, understanding of business and its needs, cost effectiveness and civility.

      Sughrue Mion, based in Washington D.C., is a leading global intellectual property firm, counseling clients as they navigate the complexities of patent and trademark law. Sughrue’s practice is focused solely on intellectual property law, including counseling, prosecution, licensing, litigation, portfolio management and enforcement. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from electrical and computer technology to biotechnology and pharmaceuticals, allowing for a true understanding of their clients’ business challenges and goals.
    • 12/1/2016

      On November 8, 2016, John Rabena discussed “the recent key developments at the International Trade Commission and companies' options after an exclusion order has been issued” at the Service Center of Shanghai Municipal Commission of Commerce, Shanghai China.

      The Service Center of Shanghai Municipal Commission of Commerce is responsible for, among other things, promoting the export of technology, software, and products with independent IPR; facilitating companies' business expansion, diversifying markets, and helping local famous brands to expand in domestic and international markets.

      For more information, please click here.

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    • 1/25/2017
    • 1/24/2017
    • 1/9/2017

      In Phigenix Inc., v. Immunogen Inc., Phigenix sought inter partes review of U.S. Patent No. 8,337,856 alleging that claims 1-8 were unpatentable as obvious over various prior art references.  The PTAB found that the asserted claims were nonobvious.  Phigenix appealed the PTAB's decision to the Federal Circuit.  ImmunoGen filed a motion to dismiss for lack of standing.

      The Federal Circuit recognized that while Article III standing is not necessarily a requirement to appear before an administrative agency, an appellant must nevertheless supply the requisite proof of an injury in fact when it seeks review of an agency's final action in federal court.  The Federal Circuit noted that an injury in fact requires two elements: (1) a concrete injury, that is an actual harm or a harm which appears imminent, a conjectural or hypothetical injury is insufficient; and (2) that the injury is particularized, that is the injury affects an appellant in a personal and individual way. 

      In this case the Federal Circuit held that Phigenix failed to supply the requisite proof on an injury in fact and ImmunoGen's motion to dismiss was granted.  In particular, the Federal Circuit noted that Phigenix had initiated the inter partes review proceeding for the purpose of challenging a competitor’s patent not because Phigenix was concerned about infringement, but because the competitor’s patent allegedly interfered with Phigenix’s efforts to license its own patents directed to a similar technology.  The Federal Circuit concluded that this did not constitute a concrete injury and thus Phigenix lacked standing
    • 1/3/2017

      In In Re: Van Os, the Federal Circuit heard an appeal from a Patent and Trademark Appeal Board decision reaffirming an examiner's 35 U.S.C. § 103(a) rejection of claims 38-41 of patent application 12/364,470 over two prior art references, Hawkins et al. U.S. Patent No. 7,231,229 in view of Gillespie et al. U.S. Pub. No. 2012/0191029.

      Claims 38-41 of the '470 patent application relate to a portable electronic device with a touch screen interface displaying a plurality of icons, and implementing a reconfiguration mode allowing for the reorganization of the plurality of icons with respect to one another based on touching a particular icon for a duration longer than a duration required to initiate the application corresponding to the particular icon.

      The examiner found the Hawkins reference disclosed each limitation, but did not explicitly disclose that the interface reconfiguration mode is initiated by a user touch of a longer duration than a user touch of a first duration used to initiate an application corresponding to an icon.  The examiner determined that the Gillespie reference satisfied this limitation, and reasoned adding this feature to Hawkins would be an intuitive way for users of Hawkins' device to enter into the editing mode.  The Board incorporated the examiner's analysis, concluded the examiner did not err in holding the claims obvious.

      In its discussion of motivation to combine references, the Federal Circuit first looked to KSR.   The Court recognized that KSR criticized rigid preventative rules that deny factfinders recourse to common sense when determining whether there would have been a motivation to combine prior art.  KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).  Further, KSR credits common sense and creativity of a skilled artisan to assess whether there would have been a motivation to combine elements from prior art references in the manner claimed. Id. 418-21.

      However, the Court further recognized that the flexibility afforded by KSR did not extinguish the factfinder's obligation to provide reasoned analysis.  Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the "analysis should be made explicit." Id. at 418.

      Therefore the Court reasoned that obviousness findings grounded in "common sense" must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness, and while the Board may rely on common sense, it must explain why "common sense" of an ordinary artisan seeking to solve the problem at hand would have led him to combine the references.

      The Court held that absent some articulated rationale, a finding that a combination of prior art would have been "common sense" or "intuitive" is no different than merely stating the combination "would have been obvious", and such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.

      Therefore in this case the Court ruled that neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation to combine the disclosures beyond stating it would have been an intuitive way to initiate Hawkins editing mode, and they vacated the Boards finding that claims 38-41 were obvious and Remanded the case back to the Board.

      Judge Newman concurred in part and dissented in part, concurring in that she agreed that the bare recitation by the Board and examiner that it would have been "intuitive" to combine the disclosures is inadequate to support a ruling of obviousness, and dissenting in that remand is not the appropriate remedy in examination appeals in which the PTO has not carried its burden of establishing unpatentability
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    • 2/23/2017
      Pune and Bangalore

      This is a one-day seminar on Software and Electronics Patent Portfolio with Focus on Preliminary Preparation, Prosecution, and Litigation in India And US.
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