News

CAFC Reverses PTAB, Reducing Burden for Corroborating Evidence for Conception and Reduction to Practice

09.26.2017

In NFC Technology v. Matal (September 2017), a panel of the Federal Circuit reversed the PTAB’s finding of obviousness based on the patent owner’s failure to antedate a prior art reference.  The PTAB held that a third party’s fabrication of a prototype did not inure to the benefit of the inventor for purposes of reduction to…

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CAFC Reverses PTAB and Cautions the PTO on Use of Inherency and Reasonable Expectation of Success

08.11.2017

In Honeywell v. Mexichem (August 2017), a panel of the Federal Circuit reversed the PTAB’s findings of obviousness from an inter partes reexamination.  Honeywell’s patent covered a refrigeration composition for air conditioning systems, including an unsaturated hydrofluorocarbon (HFC) refrigerant plus a polyalkylene glycol (PAG) lubricant.  The primary reference teaches the specific composition of HFC claimed…

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Potential Benefit of Means-Plus-Function Limitations

08.11.2017

Many US practitioners intentionally use means-plus-function limitations sparingly and in very limited situations. The recent Federal Circuit case IPCom v. HPC (July 2017) highlights one potential benefit of means-plus-function limitations. Specifically, the PTAB (via inter partes reexamination) treated the limitation “an arrangement for reactivating the link with the first base station if the handover is…

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More Clarity on AIA On-Sale Bar

08.11.2017

In a panel decision the US Court of Appeals for the Federal Circuit (CAFC) had its first opportunity to interpret the “or otherwise available to the public” clause included in 35 U.S.C. § 102 as revised under the AIA. Particularly, in this case, although the patentee entered into a publicly disclosed purchase agreement that covered the…

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PTAB Confirms Assignor Estoppel Not a Defense in IPR Proceedings

08.11.2017

Traditionally, the doctrine of assignor estoppel prevented a seller of a patent from challenging the validity of that patent. One situation where I have seen this arise is when an inventor assigns his/her rights in a patent to his/her employer in exchange for consideration, and subsequently, the inventor leaves that employer to start a competing business…

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