Patent Owners' Use of Unexpected Results Before IPR Institution

Cases Where the Board Was Not Persuaded by Evidence of Unexpected Results at the Preliminary Stage of an IPR. In most cases where the patent ...

Evidence of Unexpected Results Key to Grant of Substitute Claims in ...

To rebut obviousness, patent owner argued that unexpected results establish that the claimed inventions were not obvious. However, patent owner ...

Objective Evidence in IPRs to Date: Why Are Most Patent Owners ...

To show how commercial success supports non-obviousness, however, Patent Owner must prove that the sales were a direct result of the unique ...

Cited but Unapplied References Support Denial of IPR Institution ...

... results unexpected. However, the patent owner argued, and the Board agreed, that the prior art and evidence of record, which included a ...

Expecting the Unexpected - NDLScholarship

results aren't even discovered until after the patent application is filed. ... 128 Pharmaceutical patent owners use these new patents not to dramatically ...

The Resurgence and Perils of Ex Parte Reexaminations

But the result is that the claims are almost always amended. This is deeply problematic for patent owners as claims amended in reexamination ...

Spotlight on Objective Evidence of Nonobviousnes in AIA Post

prior art asserted as the grounds for unpatentability, Patent Owner would not be able to show that any superior results were unexpected or that ...

Federal Circuit Affirms PTAB's Substitution-Based Obviousness ...

Accordingly, the CAFC found that the PTAB's factual findings related to Patent Owner-Appellant's argument as to unexpected results were supported by substantial ...

Federal Circuit Patent Updates - September 2018 | WilmerHale

The prior art was capable of being operated in accordance with the claims but was also capable of operating in other ways. The Court found that ...

2145-Consideration of Applicant's Rebuttal Arguments and Evidence

Nonobviousness can be shown when a person of ordinary skill in the art would not have reasonably predicted the claimed invention based on the prior art, and the ...

PTAB: Petitioner Not Obliged to Address Evidence of Object Indicia ...

The Patent Trial and Appeal Board recently denied a patent owner's request for rehearing of an institution decision, rejecting arguments ...

Discretion to Institute Under § 325(d) - Buchanan PTAB Report

In determining whether to institute an IPR, CBM or PGR proceeding, the Board may take into account whether, and reject the petition or request because, ...

Patent Trial and Appeal Board Consolidated Trial Practice Guide ...

Example 2: where a patent owner relies upon surprising and unexpected results to rebut an ... IPR, PGR, and CBM Amendments: Patent owners in IPR, PGR, and CBM ...

PTAB Highlights | Takeaways from Recent Decisions in Post ...

Express Mobile, Inc., IPR2021-01456 (March 3, 2022) (Hagy, joined by Smith and Moore) (granting institution of IPR and rejecting Patent Owner's ...

Predicting Institution Outcomes for Inter Partes Review (IPR ... - MDPI

... used to predict trial institution or denial based on the patent owner's preliminary response brief. The results show how interpretable deep learning ...

Pharma at the PTAB | Insights - Venable LLP

Also, patent owners should not lose hope as to secondary considerations: the Prolensa IPRs are a testament that robust objective evidence of non ...

PTAB Rejects Double-Dose of Prior Art

A Patent Trial and Appeal Board (“PTAB”) panel denied IPR institution where the asserted prior art was cumulative of that considered during ...

Changes Under Consideration to Discretionary Institution Practices ...

As the Court stated, “one important congressional objective” in establishing IPR review is “giving the Patent Office significant power to ...

Patent Owner Tip #11 for Surviving an Instituted IPR: Use It or ... - Mintz

While Patent Owners have the option of responding to arguments made in an IPR petition prior to institution in the preliminary response, they ...

PRE-INSTITUTION AT PTAB: OBTAINING A DENIAL IS A PATENT ...

Even where PTAB grants the IPR petition, however, a POPR may lead to institution on fewer claims, fewer grounds, or PTAB adopting Patent Owner's ...