New Precedent/Informative Decisions Demonstrate Nexus Considerations

Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and two informative decisions directed to the application of objective indicia to obviousness determinations.  Collectively, the decisions outline the necessary degree of nexus between subject claims and submitted objective indicia.
Continue Reading PTAB Highlights Successful Application of Objective Indicia

New Printed Publication Precedent/Informative Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and four informative decisions directed to printed publication analyses.

The four informative decisions stem from AIA trial proceedings, and address common fact patterns in assessing public accessibility of a printed publication.  Perhaps of most interest is the precedential decision, which outlines important distinctions between examinational and adjudicatory procedures before the agency.
Continue Reading PTAB Precedent Distinguishes Prima Facie Case from AIA Trial Practices

Most Patent/Trademark Prosecution Dates Extendible – Some PTAB

The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.  Today’s announcement is in addition to earlier announced accommodations.
Continue Reading USPTO Offers 30 Day Extensions Under CARES Act

PTAB Estoppel & Inequitable Conduct

Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel.  That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.

But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners.
Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware

Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that

101 Guidance To Relax Patentability Standard?

Today, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (here). The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (here). The documents will be published in the Federal Register on Monday, January

Informative Decision Led to Confusion

Last month the Patent Trial & Appeal Board (PTAB) designated Ex Parte Jung 2016-008290, “informative.” An informative decision is one that expresses the “Board’s general consensus on recurring issues and guidance to examiners, appellants, patent owners, or petitioners in areas where parties routinely misapply the law.”

In Jung, the Board construed the claim terminology “at least one of A and B” to be conjunctive. That is, this language was determined to be properly construed (following the Federal Circuit precedent of SuperGuide Corp. v. DirecTV Enters., Inc.), as “at least one of A and at least one of B.”  However, the Board also noted that a patent’s claims, specification, or prosecution history may necessitate a broader meaning. Thus, in some scenarios, “at least one of A and B” is properly construed in the disjunctive as “at least one of A or B.”

Since being designated informative, however, Jung seems to have created confusion on whether or not the PTAB was making new law.
Continue Reading PTAB De-Designates Ex Parte Jung as Informative Decision

Continuation Applications & Terminal Disclaimers: Infectious Estoppel

Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.

Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage.
Continue Reading Standard Patent Prosecution Practices Invite Collateral PTAB Damage

Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis

A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that proposed combination.

In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB).
Continue Reading CAFC Teaches Away on Teaching Away

Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware.
Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night