Imagine That IP Law Blog

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how ... Read More ›

Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242.  In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous ... Read More ›

The Director of the USPTO, Kathi Vidal, issued a decision this week raising the likelihood that the Patent Trials and Appeals Board (PTAB) will exercise its discretion to deny the institution of Inter Partes Review (IPR) challenges. Last June, Vidal issued guidance on the discretionary denial standard, which was widely interpreted to be the death knell for discretionary denials. The Director’s decision this week will undoubtedly change that view. It appears that the prospects for discretionary denial are alive and well at the PTAB.

In  COMMSCOPE TECHNOLOGIES LLC, v DALI ... Read More ›

One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation. Although there are similarities between these types of proceedings, as IPR/PGR proceedings are also adversarial between the petitioner (i.e., the patent challenger) and the patent owner, there are important differences between the two. Besides the differences in legal ... Read More ›

Discussing the technical advantages of an invention, a standard practice in many jurisdictions such as before the European Patent Office, has long been disfavored in the US.  However, recent Federal Circuit case law suggests that there may be significant value to be gained by discussing the advantages of the claimed invention in the context of the prior art in order to establish patent eligibility under 35 U.S.C. §101.

In the recent Federal Circuit Court of Appeals case of Cooperative Entertainment, Inc. v. Kollective Tech, Inc., the Court reaffirmed the importance of the ... Read More ›

The April 16^th, 2022, New York Times editorial entitled “Save America’s Patent System” recommends that the US Patent and Trademark Office (USPTO) be improved through collaboration with other agencies such as the Food and Drug Administration (FDA). The editorial identified that “[e]xisting regulations allow medical device makers to sidestep burdensome regulatory approvals if their newer products are deemed similar to ones that already exist.”

However, the editorial board of the New York Times recognized that the lack of collaboration between the FDA and the USPTO ... Read More ›