Recent Proposal for Section 101 Reform

By John Isacson A bipartisan group of Senators and Representatives recently released a framework for amending Section 101.  The group includes Senator Chris Coons (D-Del.) and Senator Thom Tillis (R-N.C.), as well as Representative Doug Collins (R-Ga.), Representative Hank Johnson (D-Ga.) and Representative Steve Stivers (R-Ohio).  As Senator Coons stated in a press release: Today, … Continue reading Recent Proposal for Section 101 Reform

CAFC Reverses PTAB on §315(b) Petition Time Bar Interpretation

By Reza Mollaaghababa Section 315(b) of the America Invents Act (AIA) provides that an inter partes review (IPR) proceeding “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a … Continue reading CAFC Reverses PTAB on §315(b) Petition Time Bar Interpretation

When Can Common Sense be Relied Upon to Find an Invention Obvious?

By Alicia Palladino All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide additional evidence, above and beyond the sole prior art reference, when using common sense to conclude the invention is obvious. Recently, the … Continue reading When Can Common Sense be Relied Upon to Find an Invention Obvious?

Status Quo At The PTAB For Now: Supreme Court makes no changes to IPR Practice

By Maia Harris and Frank Liu Last week, the Supreme Court declined to make any changes to IPR procedure in its opinion in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. ___ (2016). Relying primarily on statutory language and concepts of agency rulemaking authority, the Court found no reason to alter the Federal Circuit’s interpretation … Continue reading Status Quo At The PTAB For Now: Supreme Court makes no changes to IPR Practice

PTAB Can Rely Upon Prior Art Not Cited in an IPR Institution Decision to Establish the State of Art

By Frank Liu The Federal Circuit affirmed the PTAB’s final determination in Genzyme Therapeutic Products Limited Partnership v. Biomarin Pharmaceutical Inc., Nos. 2015-1720, 2015-1721 (Fed. Cir. June 14, 2016), holding that the PTAB did not violate the Administrative Procedure Act (APA) by relying upon prior art references not identified in the grounds on which the … Continue reading PTAB Can Rely Upon Prior Art Not Cited in an IPR Institution Decision to Establish the State of Art