Category Archive: Specification As Guide

Dec 22

Unreasonable Claim Construction Causes PTAB Reversal

  In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB today in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining the challenged claims to be unpatentable because, as a matter of logic, the prior art could not anticipate or render those claims. The patent …

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Dec 04

Federal Circuit Weighs in on IPR Again, and Judge Newman Regains Her Footing as Pro-Patent Crusader

The Federal Circuit issued another substantive, IPR-related opinion today in Prolitec, Inc. v. ScentAir Techs., Inc., 2015-1020 (Fed. Cir. Dec. 4, 2015) (appealing from IPR2013-00179). The Board had determined that each of the two claims at issue was unpatentable and the Federal Circuit affirmed. On appeal, Patent Owner made five challenges to the PTAB’s decision in the underlying …

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Jun 03

PTAB Decision Illustrates Advantage of Defining Terms in Specification

Given the difficulty Patent Owners are having in surviving IPR proceedings, the discussion often turns to ways in which patents can be drafted to help survive an IPR Petition. In this regard, the recent decision in Aker Biomarine AS et al. v. Neptune Tech. et al., (IPR2014-00003), teaches that, in the right circumstances, a patent …

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Jan 07

Preliminary Response that Addresses the Merits of Petition Again Fails in Grant of IPR Trials

Time and again, Patent Owner arguments on the merits in Preliminary Responses  have been smothered by expert testimony and other evidence that is allowed with a petition.  As such, as IPR practice has evolved, more and more Patent Owners are waiting until the formal Patent Owner response before presenting its arguments.  In short, and as …

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Nov 07

Operability of Combined References Considered by PTAB in Obviousness Analysis

In a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as Zodiac Pool Sys., Inc. v. Aqua Products, Inc. (IPR2013-00159), involving U.S. Pat. No. 8,273,183. …

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Oct 31

Shoe Wars Reach PTAB as Inter Partes Review Brought by Adidas is Granted Against Nike Patent

Challenging a patent of a major industry rival, Adidas was able to get all 46 challenged claims of a Nike patent into a trial for inter partes review in a case styled as Adidas AG v. Nike, Inc. (IPR2013-00067), involving U.S. Pat. No. 7,347,011. The ‘011 patent relates to footwear having a textile upper. More …

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Oct 28

PTAB’s Detailed Claim Construction Analyses Exemplified in Grant of Three IPR Petitions

The Patent Trial and Appeal Board (PTAB) has impressed with its detailed and well-grounded claim construction analyses to date in its decisions instituting inter partes review trials.  Examples of such analyses were on display in two related institution orders, styled as Oracle Corp. v. Clouding IP, LLC (IPR2013-00098, IPR2013-00099, and IPR2013-00100), involving U.S. Pat. Nos. 6,918,014, 7,065,637, and 5,825,891. …

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Jul 08

53 for 58: Another Oracle win over Clouding IP

In yet another petition against Clouding IP, Oracle was successful in getting all thirteen challenged claims of a Clouding IP patent into inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00075), involving U.S. Pat. No. 6,925,481. The ’481 patent relates to pervasive computing, and more specifically describes methods, …

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Jul 05

52 for 57: Oracle Successful Again in IPR War Against Clouding IP

The IPR battles between Oracle and Clouding IP continue, with 17 petitions for Inter Partes Review currently pending.* In this installment, Oracle was successful in getting seven of ten challenged claims of a Clouding IP patent into an inter partes review trial in a case styled as Oracle Corp. v. Clouding IP, LLC Inc. (IPR2013-00089), involving U.S. …

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Jun 27

47 for 52: Expert Declaration Provides Support for Grant of Inter Partes Review Trial

Expert testimony played a key role in Motorola successfully forcing three challenged claims of a Mobile Scanning Technologies patent into an IPR trial, in a case styled Motorola Solutions, Inc. v. Mobile Scanning Technologies, Inc. (IPR2013-00093), involving US Patent No. 6,065,880.  Trial was instituted for all three challenged claims based on 5 out of 18 …

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