IP Blog
IPR
Claim Interpretation and the Enablement Requirement
Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid...
A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding
In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what a printed publication is during examination. This decision centered on an FDA transcript that was the subject of an earlier IPR proceeding in which the PTAB held that...
Written Decision Needed For IPR Estoppel
In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the...
CAFC Affirms Use of “General Knowledge” in Obviousness Analysis
The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the...
Inter Partes Review Estoppel Extends to Non-Petitioned Grounds
Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to support arguments of patent claim invalidity. Magistrate Judge K. Nicole Mitchell recommended granting a motion for Summary Judgment that HP was estopped under 35 U.S.C. §315(e)(2) from asserting the obviousness of...
“Molded” Construed as Product-by-Process in IPR
In the Final Written Decision in L&P Property Management Company v. National Products Inc., the PTAB construed the terms “molded docking station,” “molded wall,” and “molded apparatus body” as product-by-process limitations. The PTAB based this conclusion largely on intrinsic evidence, and since the specification primarily described “molded” in terms of the process by which the part is made, as opposed...
IPR Estoppel Regarding Petitioned, Non-Instituted Claims
A Wisconsin district court held that 35 U.S.C. § 315(e) can estop an accused infringer from challenging a patent claim’s validity when based on a new invalidity theory, even with PTAB non-instituted claims. Douglas Dynamics, LLC. v. Meyer Prods. LLC, No. 14-cv-866-jdp (W.D. Wis. May 15, 2017). By way of background, Meyer Products petitioned the PTAB for inter partes review...