• Posts by Brandon R. Theiss
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    Brandon is a technology-first patent attorney with extensive experience in the complete patent lifecycle, from prosecution before the US Patent and Trademark Office through monetization and post grant challenges. As an inventor ...

The Syntax of Markush and Superguide Constructions: Strategies for Claiming Elements in Combination  

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

Posted in: Patents

Challenge to Prior Art in IPR Petitions – Is It Analogous Art?

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

The Plain and Ordinary Meaning of the Petitioner’s Burden in an IPR

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including ... Read More ›

Getting A Vector on Additional Pre Institution Briefing in IPRs

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a ... Read More ›

A Reasonable Expectation of Success in an IPR Petition

In an Inter Partes Review (IPR), the burden of proof and persuasion lies with the petitioner to demonstrate "unpatentability by a preponderance of the evidence" under 35 U.S.C. § 316(e). “[T]hat burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Accordingly, to invalidate a claim in an IPR, the petitioner must establish by a preponderance of the evidence, that a claim in a patent is unpatentable.

To prove that a claim is unpatentable for violating “obviousness” requirements under 35 U.S.C §103, a ... Read More ›

After 43 Years The Bayh-Dole Act Still Reigns Over US Government Funded Innovations

The Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act, was enacted in 1980 as a United States federal law. Its purpose is to establish a framework for the ownership and commercialization of intellectual property that arises from research and development (R&D) activities funded by the federal government.

Prior to the enactment of the Bayh-Dole Act, the U.S. government retained ownership of inventions resulting from federally funded research. However, this approach often led to the underutilization of these inventions, as the government lacked the ... Read More ›

Posted in: Patents

Anything You Say May Be Used For Or Against You In A Court Of Patent Law

Applicant-admitted prior art (“AAPA”) refers to a situation in patent applications where the person or entity applying for a patent acknowledges the existence of prior art relevant to their invention. When an applicant admits prior art, they are essentially acknowledging that the invention they are seeking to patent is not entirely new or novel. By admitting the existence of prior art, the Applicant is disclosing that similar or related technologies or inventions already exist, which could potentially impact the patentability of their own invention.

In the United States ... Read More ›

The “Inventive Step” in Analogous Prior Art

In Sanofi-Aventis Deutschland GMBH v. Mylan Pharmaceuticals Inc., No. 2021-1981, 2023 U.S. App. LEXIS 11311 (Fed. Cir. 2023), the Federal Circuit reversed a decision by the Patent Trial and Appeal Board (“PTAB”) that found all challenged claims of U.S. Patent No. RE47,614 (“the ‘614 patent”) unpatentable in Inter Partes Review (IPR) IPR2019-01657. The Petitioner (Mylan) argued that the combination of three prior art references rendered the claims obvious. In attempting to sustain its burden of establishing obviousness, Mylan appears to have attempted to apply the ... Read More ›

Getting HIP with Inventorship

In last week’s precedential decision in HIP, Inc. v. Hormel Foods Corp, the Federal Circuit reversed a decision by the District Court of Delaware holding that an inventor, David Howard, should be added as a joint inventor on U.S. Patent 9,980,498 (“’498 Patent”). The Federal Circuit reasoned that the inventor failed to satisfy the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344,1351, because his contribution to the claims of the ‘498 Patent was “insignificant in quality.” HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 U.S. App. LEXIS ... Read More ›

Potential issue with Reissue Patents

Last week’s non-precedential decision by the Federal Circuit Court of Appeals in Cioffi v. Google LLC, No. 2018-1049, 2023 U.S. App. LEXIS 9142 (Fed. Cir. Apr. 18, 2023) serves as a warning for both holders of reissue patents and patent owners considering filing a reissue. The Court held that the “original patent” requirement is the standard for support in the specification for claims in a reissued patent under 35 U.S.C. §251. In order for a claim to be supported under the original patent requirement, there must be an express disclosure of the exact embodiment claimed on reissue ... Read More ›

Tackling the Sequoia of Claim Construction

Earlier this week, the Federal Circuit issued an opinion in Sequoia Technology LLC v. Dell Inc. et al. that underscores the importance of intrinsic evidence when construing claim language in a District Court litigation. Of particular importance are the Court’s statements regarding the patent specification’s provision of an “express purpose of the invention” and a “preferred embodiment,” as well as the Court’s reliance on statements made by the Patent Owner in its pre-institution filings and on a document cited in an Information Disclosure Statement (IDS) during ... Read More ›

Does "A" Still Mean "At Least One" In Open-Ended Claims?

In Salazar v. AT&T Mobility LLC, the Federal Circuit found that a claim reciting "a microprocesser" that performed several functions was not infringed by a system where the claimed functions were distributed among multiple microprocessors. The Court reasoned that “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”  Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376, 2023 U.S. App. LEXIS 8071, at *15 (Fed. Cir. Apr. 5, 2023)

The claim in Salazar recited:

  1. A communications ...
"At Least One Of" Revisited: Arguing SuperGuide as a Basis for Patent Validity

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and ... Read More ›

A New Cache to the “Known Technique" Test For Obviousness Under 35 U.S.C. § 103

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 Further Clarifies When a Discretionary Denial of an IPR is Appropriate Under Fintiv

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 ›

Discretionary Denials under Fintiv Rebooted by Vidal’s Decision

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 ›

A Different State of Mind: Getting Technical With Post-Grant Proceedings Before the PTAB

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 ›

Including a Description of Technical Advantages During Patent Application Drafting May Help Patent Eligibility

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 ›

Posted in: Patents

Improving Medical Device Patents Through Better Communication between USPTO and FDA

The April 16th, 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 ›

Posted in: Misc, Patents

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