Case Updates

The following excerpts were presented in previous CASE UPDATES:

CAFC Holds that IPR Petitioner Bears the Burden of All Propositions of Unpatentability

The U.S. Court of Appeals for the Federal Circuit (CAFC) rendered its en banc decision in Aqua Products v. Matal. In IPR proceedings, the PTO has imposed certain requirements on Patent Owners who try to amend claims during the IPR proceeding. Specifically, the PTO has required Patent Owners to show that the claims (as amended) would be patentable. This has proven to be a very difficult burden to satisfy, and as a result, the PTO has generally refused Patent Owners’ attempts to amend claims. Indeed, in the Aqua Products case attached, in the IPR proceeding, the PTO has denied Aqua Products motion to amend its claims…

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CAFC Vacates PTAB Finding of Obviousness – Failed to Properly Support Assertion of “Routine Optimization”

In In re Stepan, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered a precedential opinion, in which the CAFC vacated a decision by the Patent Trial and Appeal Board (PTAB). The underlying decision by the PTAB upheld an Examiner’s determination of obviousness, which was based on a conclusory assertion of “routine optimization.” The CAFC noted that an obviousness determination requires finding both: “that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so”…

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CAFC Reverses PTAB for Failing to Expressly Define Claim Term

In Homeland Housewares v. Whirlpool, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered an opinion, in which CAFC reversed a decision by the Patent Trial and Appeal Board (PTAB) of the US Patent & Trademark Office, because of its failure to construe the claimed term of “predetermined settling speed.” The CAFC noted: “In some cases, the ordinary meaning of claim language may be readily apparent and claim construction will involve little more than the application of the widely accepted meaning of commonly understood words.” However, “[c]laims must also be read in view of the specification, of which they are a part…

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CAFC Explains What the PTO Must Find to Hold a Patent Obvious

In Outdry v. GEOX, the U.S. Court of Appeals for the Federal Circuit (CAFC) rendered a decision, in which it upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). The patent at issue was directed to a method for waterproofing leather, and the invention specifically defined either sewing or gluing a semi-permeable membrane to an interior surface of the leather. The claims called for “directly pressing” the membrane to the leather, but the specification did not provide any meaningful discussion on what this “directly pressing” entailed…

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CAFC Finds Claimed Phrase “virtually free from interference” to be Definite under 35 U.S.C. 112

In One-E-Way v. ITC, the Federal Circuit reversed a decision by the International Trade Commission (ITC), which invalidated patents on the basis that the phrase “virtually free from interference” rendered the claims indefinite. In the decision, the Federal Circuit reversed the ITC decision on the basis that a person of ordinary skill in the art, viewing the claim term “virtually free from interference” in light of the specification and prosecution history, would be informed of the scope of the invention with reasonable certainty…

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