PTAB Announces Rules Formalizing Director Review
By: Lisa Furby, Marlee Hartenstein, Stephanie M. Mishaga and Robby Breetz - In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review (discussed here). The PTO has now issued a Notice of Proposed...
Common Ownership Exception Leads to Petition Denial
By Jack Graves and Matt Johnson - The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text, Inc.,...
“Known” Claim Elements Alone Insufficient for Motivation to Combine
By Phil Shelton, Sue Gerber, and Matt Johnson - In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. ...
Availability of Document on Government Website Insufficient for Institution
By Lisa Furby - In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB held that the petitioner...
Petition Denied for Lacking Section 112(f) Construction and Fintiv
By Luke Cipolla and Dave Maiorana - On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) (“Decision”). The PTAB denied institution on two separate grounds: (1) the...