Category Archives: Uncategorized

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 … Continue reading

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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 … Continue reading

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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 … Continue reading

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Federal Circuit Erases a Rare Patent Owner Victory and Tells PTAB: No Changing Horses (Claim Constructions) Midstream

By Tom Engellenner In a recent decision on an inter partes review (IPR) appeal, the Federal Circuit erased a rare victory for a patent owner and remanded the case back to the Patent Trial and Appeal Board (PTAB) for rehearing … Continue reading

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A Decision Not to Institute a Trial at the PTAB Does Not Carry Much Weight in Federal Court

By Tom Engellenner Two recent cases show that simply avoiding a post-grant review proceeding at the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB) not only does not preclude a defendant in underlying patent infringement litigation in a federal … Continue reading

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