The PTAB Can Offer A Second Chance At Obviousness

The PTAB Can Offer A Second Chance At Obviousness—Even After ...

This case offers another point in favor of PTAB proceedings from the challenger's perspective—the PTAB can invalidate a patent, even after a ...

History Has It: Time to Terminate Obviousness-Type Double Patenting

While obviousness-type double patenting (ODP) has a long history, Supreme Court precedent and common sense make it clear that the time has come to put ODP to ...

Establishing Unexpected Results: PTAB Highlights Pitfalls for Rule ...

Second, the PTAB found that even if it showed a difference between the results obtained from the claimed invention and the reference examples, ...

PTAB Erred in Evaluating Secondary Considerations and Their ...

The PTAB may provide additional guidance when it has a second opportunity to consider the secondary considerations on remand. Get full ...

Second Chances for Secondary Considerations - Sterne Kessler

Are there any creative strategies patent challengers can now advance? Yes! In two recent PTAB cases, a petitioner rebutted the presumption of ...

Secondary Considerations at the PTAB: Nexus Required, but ...

The Supreme Court recognized long ago that a patentee can overcome a prima facie showing of obviousness by presenting objective evidence of ...

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

Is the level of factual analysis that often comes with objective evidence just too big of an imposition on the tight timeline of the IPRs? Is ...

716 Affidavits or Declarations Under 37 CFR 1.132 and ... - USPTO

The weight attached to evidence of secondary considerations by the examiner will depend upon its relevance to the issue of obviousness and the amount and nature ...

The Case Law on Obviousness-Type Double Patenting

“The law on ODP after Cellect is unpredictable and retroactively penalizes patent owners who have prosecuted child applications in good ...

Establishing Nexus between Secondary Consideration Evidence ...

The PTAB ultimately concluded that the secondary considerations evidence weighed heavily in favor of non-obviousness and determined that the ...

Ten Years after KSR, Motivation to Combine Moves Back into the ...

Also, an obviousness determination, even during prosecution, cannot be ... the PTAB will carefully scrutinize examiners' rationales for combining references.

PTAB Finds Secondary Considerations Outweigh Evidence of ...

Thus, the PTAB found that strong secondary evidence of non-obviousness overcame solid, but imperfect, evidence of obviousness. Although it is ...

2141-Examination Guidelines for Determining Obviousness Under ...

AG Pro, Inc., the Court derived . . . the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to ...

Obviousness (Sec. 103) - Klarquist Patent Defenses

The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.

Federal Circuit Says: Mind the “Plainly Obvious” Gap - Wolf Greenfield

The Federal Circuit then reversed the finding of obviousness (rather than remanding for the PTAB to elaborate), reasoning that there was ...

U.S. Patent Trial and Appeal Board Decisions: Secondary ...

To date, the PTAB has begun to formulate a strict but still-evolving standard for how and when it will consider secondary considerations ...

Prior Art in Inter Partes Review

Second, even if the overall benefits of IPR as a procedural tool ... This springing mechanism can even stymie patent examiners—though they have access.

Discretionary Denial under § 325(d): Strategic Implications of the ...

The PTAB considers exercising its discretion under Section 325(d) when petitions raise the same or substantially the same prior art or arguments previously ...

PTAB Provides Infringers a Second Chance, Ruling That Claim ...

The PTAB held that claim preclusion does not apply to IPR proceedings, giving an accused infringer subject to an adverse final judgment in district court ...

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

Then use caution when relying on statements in the background section to provide motivation for obviousness. ... secondary reference would ...