Tag Archives: Federal Circuit

CAFC Affirms PTAB’s Decision That Printed Matter Doctrine Can Be Used In Claim Construction

By Reza Mollaaghababa In an inter partes review proceeding, a challenger cannot raise patent-eligibility as a ground of invalidity.  Rather, the invalidity grounds are limited to lack of novelty and obviousness.  Notwithstanding, in construing claim terms, the PTAB can decide … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Appeals, Claim Construction, Court of Appeals Fed Circuit, Federal Circuit, Mental Steps Doctrine, Patent Eligible Subject Matter, Printed Matter Doctrine, USPTO | Tagged , , , , , , , , ,

Once The Federal Circuit Affirms A PTAB Finding Of Invalidity, Collateral Estoppel Prevents Patent Owner From Asserting The Claims In Any Further Proceeding

By Reza Mollaaghababa On May 23, 2018, in XY, LLC v. Trans Ova Genetics, L.C., CAFC held that its affirmance of PTAB’s invalidity decision regarding certain claims of a patent owned by XY in a separate appeal involving a different … Continue reading

Posted in Anticipation/Obvious, Court of Appeals Fed Circuit, Covered Business Methods, Federal Circuit, Final PTAB Decision, Inter Partes Review, Post Grant Review, USPTO | Tagged , , , ,

Allergan’s Mohawk Gambit May Be Doomed – PTAB Rethinks the Scope of Sovereign Immunity

By Tom Engellenner A few months ago, the Irish drug company Allergan moved to shield its key patents on its dry-eye drug Restasis from challenge at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent Office by assigning … Continue reading

Posted in America Invents Act, Court of Appeals Fed Circuit, Covered Business Methods, Enlarged PTAB Panels, Federal Circuit, Final PTAB Decision, Instittion Decision, Inter Partes Review, Motion to Dimiss, Post Grant Review, PTAB Procedure, Sovereign Immunity, Trial Tactics, USPTO | Tagged , , , , , , , , , , , , , , ,

Federal Circuit Slams PTAB Amendment Policy

By Tom Engellenner On October 4, 2017, the Court of Appeals for the Federal Circuit, sitting en banc, overruled an earlier panel decision and found that the Patent Trial and Appeal Board (PTAB) had been impermissibly placing the burden of … Continue reading

Posted in Amendments before the PTAB, America Invents Act, BRI Standard, Broadest Reasonable Interpretation, Claim Construction, Court of Appeals Fed Circuit, Covered Business Methods, Federal Circuit, Final PTAB Decision, Inter Partes Review, Post Grant Review, Trial Tactics, USPTO | Tagged , , , , , , , , , , ,

Federal Circuit Criticizes PTAB for Failing to Properly Weigh Objective Evidence of Non-Obviousness

By Tom Engellenner The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case for determinations consistent with its opinion. Specifically, … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Court of Appeals Fed Circuit, Final PTAB Decision, Inter Partes Review, Post Grant Review, PTAB Procedure, Reexamination, USPTO | Tagged , , , , ,