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 …

PTAB Roundup

Congratulations to our newest contributors: The PTAB Bar Association is proud to announce the addition of ten new members to Team Roundup: Ben Evans, John Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca (Reba) Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Jocelyn Yu. We are happy that these talented and hard-working PTAB practitioners …

PTAB Roundup

Happy holidays and best wishes for the New Year! Although we’re on vacation, there were a few cases our all-volunteer staff* wanted to let you know about. We’ll keep it brief so that we can all get back to our holidays. CAFC: How broad is broadest reasonable? The Federal Circuit vacated and remanded two IPR …

PTAB Roundup

In this issue of the PTAB Roundup: CAFC: Two judges suggest en banc reconsideration of bar against reviewing §315(b) determinations: A three-judge panel agreed that it was bound by the Court’s earlier decision holding that 35 U.S.C. § 314(d) prohibits parties from appealing the Board’s decision to institute despite the one-year bar of § 315(b), …

PTAB Roundup

We hope you had a Happy Thanksgiving! The CAFC and PTAB were closed over the holiday, and our hard-working volunteer staff enjoyed some time with their families. Even so, there were some notable cases we want to bring to your attention. CAFC: Narrowing the PTAB’s overbroad CBM definition: The Federal Circuit vacated and remanded because …

PTAB Roundup

CAFC: PTAB erroneously excluded evidence as hearsay: The Federal Circuit reversed-in-part and vacated-in-part because the PTAB erred in its hearsay determination. The patent owner had attempted to use the excluded documents as corroborating evidence of an earlier conception date. The Federal Circuit found that the documents were not used to prove the truth of the …