PTAB Roundup

CAFC: Getting the last word: The Board found that the petitioner effectively rebutted the patent owner’s teaching-away argument in its reply, and the Federal Circuit affirmed. A petition is not required to preemptively address every possible argument; a petitioner’s reply may counter arguments raised in the patent owner’s response. Also, both parties’ arguments relied solely …

PTAB Roundup

CAFC: Sua sponte rehearing en banc—attorneys’ fees in § 145 actions: The Federal Circuit vacated its divided panel opinion (discussed in the June 30, 2017 Roundup), and asked the parties to file new briefs addressing the following question: “Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145’s ‘[a]ll the expenses of the proceedings’ …

PTAB Roundup

CAFC: No Article III standing requirement for PTAB appellees: The Federal Circuit affirmed a Board decision canceling claims that had been asserted against Internet podcast distributors. The petitioner was a public interest organization that faced no direct threat of damages based on the patent. The patent owner argued that the petitioner therefore lacked “case or …

PTAB Roundup

CAFC: Must construe claims if their scope is in actual dispute: The Federal Circuit reversed the PTAB’s finding that the claims were not anticipated. The Board had adopted a preliminary construction of a claim term at institution, but declined to adopt any explicit construction in the final decision. The Court construed the term de novo …

PTAB Roundup

CAFC: The Board did not adequately explain its decision: On appeal, the appellant/patent owner contended that the Board’s factual findings were unsupported by substantial evidence and that the Board changed positions midstream, denying the appellant adequate notice and an opportunity to respond. The Federal Circuit vacated and remanded, holding that the Board’s decision lacked sufficient …

PTAB Roundup

SCOTUS: Indemnification and real party-in-interest: Even though the Supreme Court addressed real party-in-interest in a different context (sovereign immunity), PTAB practitioners might find this case interesting. When a state or federal employee is sued, the courts look to whether the sovereign is the real party-in-interest to determine whether sovereign immunity might bar the suit. Here, …

PTAB Roundup

PTAB Bar Association Event in Denver, Colorado: Please join us on April 25, 2017, at the USPTO Rocky Mountain Regional Office in Denver, Colorado for our inaugural regional event and reception. The PTAB Bar Association is honored to partner with the USPTO Rocky Mountain Regional Office to offer an introduction, discussion, and inside look at …

PTAB Roundup

CAFC: A modified reference does not anticipate, obviously: The Board sustained the examiner’s anticipation rejections during original prosecution, but the Federal Circuit reversed. The claims require a surgical implant with a surface capable of engaging the shoulder cavity, but the references disclosed apparatuses that would have to be substantially modified—either by removing an element or …

PTAB Roundup

CAFC: Not enough to “envisage” a limitation; it must be disclosed: Relying on Kennametal, Inc., v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015), the Board had concluded the claims were anticipated because the ordinary artisan would “at once envisage” a missing claim element. The Federal Circuit reversed. Kennametal’s “at once envisage” rule …

PTAB Roundup

PTAB Bar Association Inaugural Conference agenda: The agenda for our Inaugural Conference at the Ritz-Carlton in Washington, D.C. on March 1-3, 2017, is now posted. The event is sold out, but if you would like to be added to the waiting list, please email andy.schwarz@mci-group.com. CAFC: Not just could, but would have combined: The Federal …