Patent eligibility under US scrutiny
Hunter Baker and Scott Forman's article titled "Patent eligibility under US scrutiny" was published by Intellectual Property Magazine. Read more here.
Articles
Federal Circuit Says: Mind the “Plainly Obvious” Gap
In DSS Technology Management v. Apple, the Federal Circuit reversed a holding of unpatentability of claims that the PTAB considered plainly obvious in an IPR. The Federal Circuit found that merely sta...
Is Live Testimony a Dead Issue at the PTAB?
A recent PTAB decision highlights the difficulty of persuading the Board to allow live testimony from an expert during post-grant proceedings. In IPR2017-00433, the PTAB denied patent owner Polaris In...
How PTAB Is Defining Printed Publication
(as published by Law360) What constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the c...
The Trademark Reporter's 2018 Annual Review of U.S. Trademark Cases
The 2018 Annual Review of U.S. Trademark Cases, co-authored by John L. Welch and titled “The Seventieth Year of Administration of the Lanham Act of 1946," appeared in the January-February issue of The...
In IPR Petitions, Paste Makes Waste
The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent hol...
A Disciplined Investing Approach to Software-Related Patents
(as published by Software Magazine)
Discretionary Denial: Even the “Best” Prosecution Prior Art May Not Be Right for an IPR
A pair of recent PTAB institution decisions highlights that petitioners should be cautious when relying on prior art that was cited during the prosecution of the challenged patent. Pursuant to 35 U.S....
TTAB grants motion for summary judgment as to fraud counterclaim
John L. Welch's article titled "TTAB grants motion for summary judgment as to fraud counterclaim" was published by World Trademark Review. Read more (subscription required).
PTAB Left to Mitigate the Damage from Collateral Estoppel
Collateral estoppel, or issue preclusion, is the legal doctrine that bars a litigant from re-litigating in subsequent litigations an issue that it lost in an earlier litigation. The doctrine had been ...
For PTAB Declarations, Better to Fly Solo
Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to f...
Proving Them Wrong: FDA Skepticism Helps Save Patent Claims
Evidence of skepticism of others in an IPR can be used to support the patentability of claims in response to obviousness challenges—skepticism is a standard “objective indicia” or secondary considerat...