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    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...
    August 02, 2016
    The Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend).  However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April...
    July 13, 2016
    The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents.  While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method  (“CBM”) patents is another mechanism for reviewing validity.  Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the...
    June 23, 2016
    On June 20, 2016, the Supreme Court issued its ruling in Cuozzo Speed Technologies, LLC v. Lee.  There were two issues presented in Cuozzo: (1) whether the Board’s institution decision of an IPR is appealable, and (2) whether the broadest reasonable construction standard is appropriate to apply in patent office proceedings.  For both of these...
    June 07, 2016
    The outcomes of inter partes review petitions and final written decisions have differed dramatically for claims in pharmaceutical patents, compared to other technologies, particularly for obviousness challenges of claims to chemical compounds.  In its final written decisions of Orange Book-listed patents, the Patent Trial and Appeal Board (“PTAB”) has found claims unpatentable 35% of the time, in...
    May 17, 2016
    In Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”).  However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as...
    May 05, 2016
    Novelty and obviousness are governed by 35 U.S.C. §§ 102 and 103, respectively. Generally speaking, a novel claim is one that has not been previously described or practiced. Similarly, a claim is non-obvious if the claim, as a whole, would not have been obvious to one of ordinary skill before the effective filing of the...