PFIZER INC. v. LEE (Fed. Cir. 2016) (P) – Even substantive defects in notices such as restriction requirements may not toll the PTA clock

by Steve Driskill | Jan 22, 2016 | [sub] patent term adjustment, PTO Procedure

Even substantive defects in notices such as restriction requirements may not toll the clock for patent term adjustment purposes. Here, for example, no A Delay was found to be due for the time period between an initial and subsequently withdrawn restriction requirement...

CUTSFORTH, INC. v. MOTIVEPOWER, INC. (Fed. Cir. 2016) (NP) – An articulated reason for modifying a prior art element is required even for matters of “design choice”

by Steve Driskill | Jan 22, 2016 | [sub] motivation, Obviousness

An articulated reason for modifying a prior art element is required even for matters of “design choice” in order to establish a prima face case of obviousness. Here, for example, the fact that a lead receptacle could have been positioned on a mounting block and that...

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 Steve Driskill | 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...

IN RE URBANSKI (Fed. Cir. 2016) (P) – A proposed combination need not be operable for all of the benefits disclosed in the modified reference

by Steve Driskill | Jan 8, 2016 | [sub] teaching away, Obviousness

A proposed combination of prior art references does not have to be operable for all of the benefits disclosed in the reference being modified. Here, for example, a prima facie case of obviousness was found to be unrebutted by a showing that certain stability benefits...

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 Steve Driskill | 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...