NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record

by | Feb 11, 2016 | [sub] inter partes review, PTO Procedure

Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...

SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – A final IPR decision need not address claims raised in the original petition but denied review

by | Feb 10, 2016 | [sub] inter partes review, PTO Procedure

A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and...

ETHICON ENDO-SURGERY, INC. v. COVIDIEN LP (Fed. Cir. 2016) (P) – The same Board panel can make the decision to institute inter partes review and the final determination

by | Jan 13, 2016 | [sub] inter partes review, PTO Procedure

Neither the AIA statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination. Background / Facts: The patent on appeal here from inter partes review proceedings at the...

REDLINE DETECTION, LLC v. STAR ENVIROTECH, INC. (Fed. Cir. 2015) (P) – Timeliness and relevancy alone are not sufficient to ensure entry of supplemental information for IPR

by | Dec 31, 2015 | [sub] inter partes review, PTO Procedure

Timeliness and relevancy alone are not sufficient to ensure entry under 37 C.F.R. § 42.123(a) of supplemental information for IPR proceedings where the information reasonably could have been submitted with the IPR petition itself. Here, for example, the later...

PROLITEC, INC. v. SCENTAIR TECHNOLOGIES, INC. (Fed. Cir. 2015) (P) – Proposed amendments during IPR must establish patentability over prior art from original prosecution

by | Dec 4, 2015 | [sub] inter partes review, PTO Procedure

A patentee’s burden on a motion to amend its claims during IPR includes the burden to show patentability over prior art from the patent’s original prosecution history. Here, for example, the patentee’s motion to amend was denied because it did not address the...

MCM PORTFOLIO LLC v. HEWLETT-PACKARD COMPANY (Fed. Cir. 2015) (P) – Inter partes review (IPR) does not violate Article III or the Seventh Amendment of the U.S. Constitution

by | Dec 2, 2015 | [sub] inter partes review, PTO Procedure

The IPR system is a viable administrative procedure in so far as it does not violate Article III or the Seventh Amendment of the U.S. Constitution. Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review (IPR) proceedings is...