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290 decisions · PTAB

PTAB Precedential and Informative Decisions

The PTAB designates some of its decisions precedential, binding on the Board in later cases, or informative, which gives guidance but does not bind. These posts summarize each designated decision, including ex parte appeals and interferences, with its designation.

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  1. PTAB · Aug. 6, 2026Ex parte BaurinWhen an examiner rejects claims for obviousness-type double patenting over a reference patent that has a later patent term filing date and later expiration, and the claims on appeal are admittedly obvious variants of the reference claims,…
  2. PTAB · June 22, 2026Light & Wonder, Inc. v. Evolution Malta Ltd.When exceptional circumstances affecting institution arise after institution but before trial has progressed meaningfully—such as a co-pending litigation ruling that all or substantially all challenged claims are invalid—the Director may…
  3. PTAB · June 15, 2026Tesla, Inc. v. Bulletproof Property Management, LLCInformative decision only: persuasive authority, not binding precedent. Under NHK-Fintiv, when the parallel district-court trial date has been vacated and petitioner gives a broad stipulation not to advance any ground that reasonably…
  4. PTAB · May 14, 2026Magnolia Medical Technologies, Inc. v. Kurin, Inc.When a petitioner previously contested validity of the challenged patent in completed district-court litigation on the same or similar § 102/§ 103 grounds that could have been presented to the Office, had a full and fair opportunity to…
  5. PTAB · May 12, 2026Ford Motor Company v. AutoConnect Holdings LLCWhen a petitioner obtains institution on plain-and-ordinary-meaning unpatentability theories but then, in parallel district court litigation, advances broader indefiniteness positions affecting the challenged claims without having…
  6. PTAB · May 12, 2026Terumo BCT, Inc. v. Haemonetics CorpWhen a petitioner states in an IPR petition that challenged claims need no construction or should receive their plain and ordinary meaning, but advances a materially different district-court claim-construction/indefiniteness…
  7. PTAB · Mar. 18, 2026Tianma Microelectronics Co., Ltd. v. LG Display Co., Ltd.A foreign government is not a "person" under 35 U.S.C. § 311(a) (and § 321(a)), so under Return Mail it cannot be a petitioner in an AIA proceeding, and the bar also applies when a foreign government is a real party in interest of a…
  8. PTAB · Feb. 25, 2026Curium US LLC v. Universität HeidelbergInformative decision only: persuasive authority, not binding precedent. When a petitioner, after filing, updates its mandatory notice before institution to identify additional real parties in interest, the Director will accord the…
  9. PTAB · Feb. 5, 2026Ex parte ChowdhuryInformative decision only: persuasive authority, not binding precedent. When a claim recites a Markush group as part of a method or combination and the specification describes the members as useful for the function of the invention…
  10. PTAB · Jan. 16, 2026TikTok, Inc. v. Shopsee, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner advances different claim construction positions before the Board and in district court (here, no express constructions in the petition but…
  11. PTAB · Jan. 15, 2026Yangtze Memory Technologies Company, Ltd. v. Micron Technology, Inc.Informative decision only: persuasive authority, not binding precedent. When a patent owner produces some evidence that tends to show a particular third party should be named a real party in interest, the petitioner bears the burden to…
  12. PTAB · Jan. 12, 2026Top Glory Trading Group Inc. v. Cole Haan LLCInformative decision only: persuasive authority, not binding precedent. When a petitioner shows that a significant change in law (here, the Federal Circuit's change in the design patent obviousness standard in LKQ Corp. v. GM Global Tech.…
  13. PTAB · Jan. 12, 2026PacifiCorp v. Birchtech Corp.Absent exceptional circumstances, when a petitioner files multiple petitions challenging the same claims of a patent in a case where there is a dispute over priority date (for example, one petition under the earlier priority date and one…
  14. PTAB · Nov. 5, 2025Tesla, Inc. v. Intellectual Ventures II LLCInformative decision only: persuasive authority, not binding precedent. When a petitioner argues in district court that a claim limitation is indefinite but, in its IPR petition, adopts the plain and ordinary meaning, the petitioner's…
  15. PTAB · Nov. 3, 2025Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc.When a petitioner proposes claim constructions in an IPR petition that differ from the positions it took in parallel district court litigation, the petitioner should, at a minimum, sufficiently explain why the different positions are…
  16. PTAB · Sept. 26, 2025Ex parte DesjardinsWhen a claim recites an abstract idea (here, a mathematical calculation) at Step 2A, Prong One, but the claim as a whole reflects an improvement to how a machine learning model itself operates, as disclosed in the specification, the claim…
  17. PTAB · Sept. 19, 2025Sun Pharm. Indus., Inc. v. Nivagen Pharm., Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner advances a narrower claim construction in parallel district court litigation than the broader (plain and ordinary meaning) construction it urges in…
  18. PTAB · Sept. 19, 2025Alliance Laundry Sys., LLC v. PayRange LLCInformative decision only: persuasive authority, not binding precedent. When a patent owner presents evidence that it has licensed the challenged patent, the Director may treat that licensing as creating "some settled expectations"…
  19. PTAB · Sept. 5, 2025Apple Inc. v. Ferid AllaniInformative decision only: persuasive authority, not binding precedent. When a petitioner knew of the challenged patent from the patent owner's earlier letter but reasonably did not expect enforcement, because it concluded it needed no…
  20. PTAB · Sept. 4, 2025Home Depot U.S.A., Inc. v. H2 Intellect LLCInformative decision only: persuasive authority, not binding precedent. When a patent has been in force over twelve years and other considerations favor discretionary denial (a projected final written decision after the district court…
  21. PTAB · July 24, 2025Amgen Inc. v. Bristol-Myers Squibb Co.Informative decision only: persuasive authority, not binding precedent. When a patent has been in force only about three years (here, issued in 2022), a patent owner may still have strong settled expectations that favor discretionary…
  22. PTAB · July 16, 2025Padagis US LLC v. Neurelis, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner shows an apparent material error by the Office, such as an examiner crediting a provisional priority date for claims that substantially overlap…
  23. PTAB · July 16, 2025Multi-Color Corp. v. Brook & Whittle Ltd.When a petition for post-grant review is filed within the nine-month window of 35 U.S.C. § 321(c), the Board (through the Director's discretionary-denial review) weighs that timing as a factor favoring institution, because PGR petitions…
  24. PTAB · July 11, 2025LifeVac LLC v. DCSTAR Inc.When a petitioner files an IPR after its earlier petition for post-grant review (PGR) on the same patent was not instituted, so that no final written decision issued, the Director will generally not discretionarily deny institution of the…
  25. PTAB · June 25, 2025CrowdStrike, Inc. v. GoSecure, Inc.Informative decision only: persuasive authority, not binding precedent. Where a petitioner files two petitions against the same claims of the same patent chiefly to present two different constructions of a claim term (a broader and a…
  26. PTAB · June 25, 2025Elong Int’l USA Inc. v. Feit Electric Co., Inc.When a petitioner files a copycat petition together with a motion for joinder to an already-instituted IPR, the Director must first decide institution, because 35 U.S.C. § 315(c) has the Board determine institution before it considers…
  27. PTAB · June 25, 2025Realtek Semiconductor Corp. v. ParkerVision, Inc.When a petitioner is time-barred under 35 U.S.C. § 315(b) because it filed after the one-year period from service of the complaint, the Office may consider the fairness of letting it join an ongoing proceeding in deciding whether to deny…
  28. PTAB · June 18, 2025Dabico Airport Sols. Inc. v. AXA Power ApSInformative decision only: persuasive authority, not binding precedent. When a challenged patent has been in force almost eight years and the petitioner offers no persuasive reasoning why inter partes review is an appropriate use of…
  29. PTAB · June 13, 2025Tesla, Inc. v. Intellectual Ventures II LLCInformative decision only: persuasive authority, not binding precedent. When a patent owner asserts, and the petitioner challenges, a large number of patents from different families involving diverse subject matter in the parallel…
  30. PTAB · June 12, 2025Savant Techs. LLC d/b/a GE Lighting v. Feit Electric Co., Inc.Informative decision only: persuasive authority, not binding precedent. When a patent owner asserts additional claims in district court after the petitioner filed its first IPR, and the petitioner diligently files a second petition on…
  31. PTAB · May 19, 2025Ecto World, LLC v. RAI Strategic Holdings, Inc.When the only prior art a petition asserts was submitted on the applicant's IDS, the first part of the Advanced Bionics framework is satisfied, and the petitioner must still provide its own part-two analysis explaining, with reference to…
  32. PTAB · Apr. 17, 2025Hulu, LLC v. Piranha Media Distribution, LLCInformative decision only: persuasive authority, not binding precedent. When a district court has already entered a decision finding the challenged claims invalid under 35 U.S.C. § 101 before the Board's institution decision, the Director…
  33. PTAB · Dec. 13, 2024Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner has argued in parallel district court litigation that claim terms are means-plus-function terms under § 112(f) (and called that issue dispositive),…
  34. PTAB · Mar. 10, 2023Penumbra, Inc. v. RapidPulse, Inc.When a reference patent document is applied as prior art under AIA 35 U.S.C. § 102(a)(2), the Board need not evaluate whether any claim of the reference is actually entitled to priority or benefit under 35 U.S.C. §§ 119 or 120, so the…
  35. PTAB · Feb. 27, 2023CommScope Techs. LLC. v. Dali Wireless, Inc.When deciding whether to discretionarily deny institution under 35 U.S.C. § 314(a) in view of parallel district court litigation, the Board must first analyze Fintiv factors 1-5 and may reach the compelling merits question only if that…
  36. PTAB · Feb. 24, 2023Nested Bean, Inc. v. Big Beings Pty LtdWhen a multiple dependent claim alternatively references more than one claim and the Board finds one referenced claim unpatentable but another not unpatentable, the Board cannot hold every version of the multiple dependent claim…
  37. PTAB · Dec. 22, 2022Patent Quality Assurance, LLC v. VLSI Technology LLCWhen a petitioner has engaged in conduct that is an abuse of process under 37 C.F.R. § 42.12(a)(6), such as filing an IPR for the purpose of extracting payment, or has committed other sanctionable misconduct, the Director (and by…
  38. PTAB · Dec. 21, 2022Apple Inc. v. Zipit Wireless, Inc.When a patent owner has filed no response after institution and counsel's statement that it is not contesting is expressly contingent on the Board finding that the petitioner met its burden, the Board may not treat that statement as an…
  39. PTAB · Oct. 4, 2022OpenSky Industries, LLC v. VLSI Technology LLCWhen a petitioner uses an IPR for the primary purpose of extracting payment, is willing to forgo or sabotage the adversarial process, and fails to meaningfully pursue the patentability merits, that conduct is an abuse of process…
  40. PTAB · Sept. 7, 2022NXP USA, Inc. v. Impinj, Inc.De-designated: the USPTO de-designated this decision on April 25, 2025; it is no longer precedential. When a petitioner offers a stipulation related to Fintiv factor 4 (overlap between issues raised in the petition and in the parallel…
  41. PTAB · Aug. 24, 2022Xerox Corp. v. Bytemark, Inc.When a petitioner's expert declaration merely repeats verbatim the petition's conclusory assertion and cites no additional supporting evidence and gives no technical reasoning, the Board may give the declaration little weight and may not…
  42. PTAB · Aug. 23, 2022Code200, UAB v. Bright Data, LtdWhen a first-filed petition by the same petitioner was discretionarily denied or otherwise not evaluated on the merits, the Board may not treat General Plastic factor 1 as weighing strongly toward denial of a second-filed petition because…
  43. PTAB · Jan. 14, 2022Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLCWhen a petitioner pays the inter partes review fee by Fedwire transfer, following the USPTO's published wire instructions, a Fedwire confirmation of payment is sufficient evidence that the fee "accompanied" the petition under 35 U.S.C. §…
  44. PTAB · Dec. 1, 2020Sotera Wireless, Inc. v. Masimo CorporationWhen a petitioner files a district court stipulation that, if review is instituted, it will not pursue any ground raised or that could have been reasonably raised in an IPR (any §§ 102 or 103 ground based on patents or printed…
  45. PTAB · Oct. 28, 2020Apple Inc. v. Uniloc 2017 LLCWhen a petitioner who previously filed an unsuccessful (denied) petition on the same patent files a follow-on "me-too" petition with a motion to join another party's instituted IPR under § 315(c), the Board applies the General Plastic…
  46. PTAB · Oct. 21, 2020Snap, Inc. v. SRK Technology LLCWhen the parallel district court proceeding is stayed, the Board applying the Fintiv factors may find that the stay allays concerns about inefficiency, duplication of effort and conflicting decisions, so that the first Fintiv factor…
  47. PTAB · Oct. 2, 2020RPX Corp. v. Applications in Internet Time, LLCWhen a membership organization that sells defensive patent aggregation and files IPRs for the benefit of its members files a petition against patents asserted against a member who is itself time-barred under 35 U.S.C. § 315(b), and the…
  48. PTAB · June 16, 2020Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLCInformative decision only: persuasive authority, not binding precedent. When a parallel district court trial date is uncertain because the schedule has repeatedly been extended and carries an "or as available" qualifier, the court and…
  49. PTAB · May 13, 2020Apple Inc. v. Fintiv, Inc.Informative decision only: persuasive authority, not binding precedent. When a patent owner raises the advanced state of a parallel district court case, the Board may deny institution under 35 U.S.C. § 314(a) after holistically weighing…
  50. PTAB · Mar. 20, 2020Apple Inc. v. Fintiv, Inc.When a patent owner argues under 35 U.S.C. § 314(a) that institution should be denied because of an earlier trial date in a parallel district court case (NHK), the Board may authorize supplemental briefing and must weigh six factors…
  51. PTAB · Feb. 13, 2020Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbHWhen a petition relies on the same or substantially the same prior art or arguments previously presented to the Office in a proceeding pertaining to the challenged patent, the Board applies a two-part § 325(d) framework: (1) whether the…
  52. PTAB · Jan. 31, 2020Ex parte Grillo-LópezIn ex parte examination, where the examiner shows that a reference was made sufficiently accessible to interested persons ordinarily skilled in the art, the Board may find a prima facie case that the reference is a "printed publication"…
  53. PTAB · Jan. 24, 2020Lectrosonics, Inc. v. Zaxcom, Inc.When a patent owner offers objective indicia of nonobviousness in an IPR, the Board first asks whether a presumption of nexus applies, which requires a showing that the evidence is tied to a specific product that embodies the claimed…
  54. PTAB · Dec. 20, 2019Hulu, LLC v. Sound View Innovations, LLCWhen a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b), the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly…
  55. PTAB · Oct. 31, 2019PUMA North America, Inc. v. NIKE, Inc.Informative decision only: persuasive authority, not binding precedent. When a petition asserts the same prior art and the same rejection the examiner applied during prosecution, with substantially the same rationale, and the petitioner…
  56. PTAB · Oct. 16, 2019Oticon Medical AB v. Cochlear Limited (§ II.B and II.C)When a patent owner invokes 35 U.S.C. § 325(d) and the petition relies on new, noncumulative prior art that the Office did not consider during prosecution (here, Choi), the Board may decline to deny institution under the Becton Dickinson…
  57. PTAB · Sept. 6, 2019In-Depth Geophysical, Inc. v. ConocoPhillips Company (§ I.E)Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a prior art "printed publication" under 35 U.S.C. §§ 102 and 311(b) and offers only a vague website date and…
  58. PTAB · Aug. 23, 2019GoPro, Inc. v. 360Heros, Inc.When a party is served, in a manner prescribed by law, with a pleading (complaint or counterclaim) asserting a claim alleging infringement of the patent, the one-year period in 35 U.S.C. § 315(b) begins on the date of service, and the…
  59. PTAB · Aug. 20, 2019Kokusai Electric Corporation v. ASM IP Holding B.V.Informative decision only: persuasive authority, not binding precedent. When the parties jointly request termination of an instituted inter partes review under 35 U.S.C. § 317(a) after settlement, and the merits have not been decided, the…
  60. PTAB · Aug. 5, 2019Hulu, LLC v. Sound View Innovations, LLCInformative decision only: persuasive authority, not binding precedent. When a petitioner's obviousness rationale for adding a reference's feature (here, a main memory database) rests on a stated premise (tight timing requirements) that…
  61. PTAB · July 26, 2019Sattler Tech Corp. v. Humancentric Ventures, LLCInformative decision only: persuasive authority, not binding precedent. A design patent claim may be challenged in post-grant review under 35 U.S.C. § 171 as lacking ornamentality, and the Board will institute under § 324(a) when the…
  62. PTAB · June 14, 2019DTN, LLC v. Farms Technology, LLCWhen a written agreement between the patent owner and a petitioner made in connection with, or in contemplation of, termination of an IPR refers to other agreements, 35 U.S.C. § 317(b) requires that those referenced collateral agreements…
  63. PTAB · May 15, 2019Ex parte FautzInformative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when claims recite mathematical formulas (a judicial exception) but the additional elements,…
  64. PTAB · May 15, 2019Ex parte KimizukaInformative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a judicial exception (here, a mental process) and its additional elements…
  65. PTAB · May 1, 2019Valve Corp. v. Elec. Scripting Prods., Inc.When a different petitioner has joined an ongoing, instituted inter partes review of the same claims of the same patent and then files its own follow-on petitions, the Board applies the first General Plastic factor ("whether the same…
  66. PTAB · Apr. 2, 2019Valve Corp. v. Elec. Scripting Prods., Inc.When a different petitioner challenges the same claims of a patent already challenged in an earlier petition, the Board may apply the General Plastic factors under 35 U.S.C. § 314(a) and, in weighing them (including factor 1, "whether the…
  67. PTAB · Apr. 1, 2019Ex parte HannunInformative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a specific implementation of speech transcription (normalizing, jitter set,…
  68. PTAB · Apr. 1, 2019Ex parte SavescuInformative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, the Board held that when a claim recites a judicial exception (here, a method of organizing…
  69. PTAB · Mar. 25, 2019Ex parte OlsonInformative decision only: persuasive authority, not binding precedent. Applying the USPTO's January 7, 2019 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a mathematical concept (Step 2A, Prong 1) but the…
  70. PTAB · Mar. 6, 2019Adaptics Ltd. v. Perfect Co.Informative decision only: persuasive authority, not binding precedent. When a petition fails to identify its grounds "with particularity" under 35 U.S.C. § 312(a)(3), so that the grounds are voluminous and excessive (here, up to ten…
  71. PTAB · Feb. 25, 2019Lectrosonics, Inc. v. Zaxcom, Inc.When a patent owner files a motion to amend in an inter partes review, a request to substitute claims is ordinarily treated as contingent, the burden of persuasion on unpatentability of substitute claims ordinarily lies with the…
  72. PTAB · Feb. 20, 2019Ex Parte SpanglerInformative decision only: persuasive authority, not binding precedent. When an examiner finds that particular relative sizes and locations of claimed features solve no stated problem and would perform equally well in the combined prior…
  73. PTAB · Feb. 1, 2019Ex parte SmithInformative decision only: persuasive authority, not binding precedent. Applying the January 7, 2019 Memorandum (2019 Revised Patent Subject Matter Eligibility Guidance), when a claim recites a judicial exception (here, the fundamental…
  74. PTAB · Jan. 31, 2019Cisco Systems, Inc. v. Chrimar Systems, Inc.When a petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent before the date the petition was filed, the Board cannot institute inter partes review under 35 U.S.C. § 315(a)(1), which…
  75. PTAB · Jan. 24, 2019Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc.When a petitioner files an IPR petition more than one year after a non-party was served with a complaint alleging infringement of the patent, and the petitioner cannot show the non-party is neither a real party in interest nor a privy,…
  76. PTAB · Jan. 24, 2019Deeper, UAB v. Vexilar, Inc.Informative decision only: persuasive authority, not binding precedent. When a petition under 35 U.S.C. § 314(a) shows a reasonable likelihood of prevailing on only a small part of what it challenges (here two of twenty-three claims on…
  77. PTAB · Jan. 23, 2019DePuy Synthes Prods., Inc. v. Medidea, L.L.C.When a party asks to have a person who submitted no declaration evidence and is not counsel of record (here, the inventor) address the panel at oral hearing, the Board will deny the request because that person's testimony would be new…
  78. PTAB · Jan. 18, 2019Amazon.com, Inc. v. Uniloc Luxembourg S.A.When a patent owner files a motion to amend under 35 U.S.C. § 316(d) in an inter partes review, the Board may consider, and a petitioner may raise in opposition, grounds of unpatentability other than § 102 and § 103, such as § 101,…
  79. PTAB · Jan. 8, 2019Huawei Device Co., Ltd. v. Optis Cellular Tech., LLCWhen a party files a request for rehearing under 37 C.F.R. § 42.71(d) and attaches evidence not of record when the decision was entered, the Board will not admit it absent a showing of good cause. The party should ideally request a…
  80. PTAB · Nov. 7, 2018Chevron Oronite Co. LLC v. Infineum USA L.P.Informative decision only: persuasive authority, not binding precedent. Even when a petitioner shows a reasonable likelihood of prevailing on one or more claims, institution under 35 U.S.C. § 314(a) remains discretionary, and the Board…
  81. PTAB · Oct. 16, 2018Johns Manville Corp. v. Knauf Insulation, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner under § 103 shows only that references are analogous art, in the same field, or merely compatible, and offers conclusory expert support, the Board…
  82. PTAB · Oct. 1, 2018Infiltrator Water Techs., LLC, v. Presby Patent TrustWhen a petitioner was served, including by waiver of service, with a complaint alleging infringement of the patent more than one year before the petition was filed, the Board cannot maintain an inter partes review under 35 U.S.C. §…
  83. PTAB · Sept. 12, 2018NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.When a petitioner asserts in an IPR the same prior art and arguments that it is asserting in a co-pending district court case, and that case is nearing its final stages and will be resolved (trial set March 25, 2019) before any Board…
  84. PTAB · June 5, 2018Sandoz Inc. v. AbbVie Biotechnology Ltd. (§ III.C.1)Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a web-posted reference as a "printed publication" under 35 U.S.C. § 311(b), it need not prove public accessibility by a preponderance at…
  85. PTAB · Mar. 2, 2018Ex parte DitzikInformative decision only: persuasive authority, not binding precedent. When a prior district court judgment of invalidity for lack of written description is final and the applicant had a full and fair opportunity to litigate, the Board…
  86. PTAB · Feb. 27, 2018Colas Sols. Inc. v. Blacklidge Emulsions, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner filed a civil action challenging the validity of a patent claim before filing its petition, and that action has not been dismissed, 35 U.S.C. §…
  87. PTAB · Jan. 19, 2018Argentum Pharm. LLC v. Alcon Research, Ltd.Informative decision only: persuasive authority, not binding precedent. When a patent owner moves under 37 C.F.R. § 42.54(a) to seal exhibits in an inter partes review, the Board will find "good cause" only if the movant adequately shows…
  88. PTAB · Dec. 15, 2017Becton, Dickinson & Co. v. B. Braun Melsungen AGWhen the same or substantially the same prior art or arguments previously were presented to the Office, the Board may exercise discretion under 35 U.S.C. § 325(d) ("the Director may take into account whether . . . the same or…
  89. PTAB · Sept. 28, 2017Facebook, Inc. v. Skky, LLCWhen a patent owner files a statutory disclaimer under 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) after the petition is filed but before the institution decision, the Board cannot apply a "time-of-filing" rule to CBM patent review…
  90. PTAB · Sept. 18, 2017Luv N’ Care, Ltd. v. McGinleyInformative decision only: persuasive authority, not binding precedent. When a petitioner's attempted deposit-account payment of the IPR filing fee fails because the account held insufficient funds, and the petitioner shows no good cause…
  91. PTAB · Sept. 6, 2017Gen. Plastic Indus. Co. v. Canon Kabushiki KaishaWhen a petitioner files a follow-on petition challenging the same claims of the same patent after an earlier petition was denied, the Board may exercise its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution…
  92. PTAB · Aug. 25, 2017Ex parte McAwardWhen examining a pending application, the Office makes a prima facie case of indefiniteness under § 112(b) (pre-AIA § 112, second paragraph) by applying the broadest reasonable interpretation and explaining how the metes and bounds of the…
  93. PTAB · Aug. 22, 2017Cultec, Inc. v. Stormtech LLCInformative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments in an IPR petition were previously presented to the Office, including through a third-party submission…
  94. PTAB · July 27, 2017Hospira, Inc. v. Genentech, IncInformative decision only: persuasive authority, not binding precedent. When the examiner during prosecution expressly decided that the challenged claims were entitled to an earlier priority date and withdrew a rejection over a reference…
  95. PTAB · July 6, 2017General Electric Co. v. United Techs. Corp.When a patent owner files a statutory disclaimer under 35 U.S.C. § 253(a) of all challenged claims that meets 37 C.F.R. § 1.321(a) and is recorded in the Office before institution, the Board cannot institute inter partes review, because…
  96. PTAB · June 20, 2017Curt G. Joa, Inc. v. Fameccanica.data S.P.A.Informative decision only: persuasive authority, not binding precedent. Because an oral hearing is open to the public and confidential information is not to be discussed in open session, the Board may, on a party's request and in view of…
  97. PTAB · Dec. 15, 2016Kayak Software Corp. v. Int’l Bus. Mach. Corp.Informative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments were previously presented to the Office during a long, exhaustive prosecution, and the petitioner shows…
  98. PTAB · Dec. 14, 2016Unified Patents Inc. v. BermanInformative decision only: persuasive authority, not binding precedent. When a petition relies on the same or substantially the same prior art or arguments previously presented to the Office (35 U.S.C. § 325(d)), including art considered…
  99. PTAB · Oct. 6, 2016Seabery North America Inc. v. Lincoln Global, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner supports a reference's status as a printed publication with a declaration from the author's thesis advisor testifying to library deposit, public…
  100. PTAB · May 23, 2016Argentum Pharmaceuticals LLC v. Research Corporation Technologies, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b) and § 102, the Board requires a "threshold showing" of public…
  101. PTAB · Apr. 28, 2016Ex parte SchulhauserWhen a method claim recites steps that need to be performed only if a condition precedent is met, the broadest reasonable interpretation covers a method in which the condition is not met, so the Board need not require prior art evidence…
  102. PTAB · Mar. 4, 2016Lumentum Holdings, Inc. v. Capella Photonics, Inc.When a patent owner argues that a petition failed to satisfy 35 U.S.C. § 312(a)(2) because the real party in interest changed after filing, the Board will treat § 312(a) ("may be considered only if") as a nonjurisdictional…
  103. PTAB · Sept. 17, 2015LG Elecs., Inc. v. Mondis Tech. Ltd.When a petitioner was served with a complaint alleging infringement of the patent more than one year before the petition was filed, the Board cannot institute inter partes review under 35 U.S.C. § 315(b), even though a later complaint on…
  104. PTAB · Aug. 18, 2015Corning Optical Communications RF, LLC v. PPC Broadband, Inc.When a petition for inter partes review fails to identify all real parties in interest, the Board cannot consider it, because 35 U.S.C. § 312(a)(2) permits consideration "only if . . . the petition identifies all real parties in…
  105. PTAB · May 14, 2015Westlake Servs., LLC v. Credit Acceptance Corp.When a covered business method patent review results in a final written decision addressing only the claims on which trial was instituted, estoppel under 35 U.S.C. § 325(e)(1) and 37 C.F.R. § 42.73(d)(1) applies on a claim-by-claim basis,…
  106. PTAB · May 1, 2015Arris Grp., Inc. v. C-Cation Techs., LLCInformative decision only: persuasive authority, not binding precedent. When a patent owner seeks additional discovery under 37 C.F.R. § 42.51(b)(2) on whether a petition is time-barred under 35 U.S.C. § 315(b) for privity, and an earlier…
  107. PTAB · Mar. 24, 2015AOL Inc. v. Coho Licensing LLCInformative decision only: persuasive authority, not binding precedent. When a party asks for rehearing by an expanded panel in an inter partes review, the Board will not treat the request as proper, because panel designation is within…
  108. PTAB · Sept. 11, 2014Medtronic, Inc. v. NuVasive, Inc.Informative decision only: persuasive authority, not binding precedent. When a petition challenges the same claims of the same patent on the same prior art and nearly identical grounds as a previously denied petition, and the petitioner…
  109. PTAB · Aug. 29, 2014Cisco Sys., Inc. v. C-Cation Techs., LLCInformative decision only: persuasive authority, not binding precedent. When a petition uses footnotes to cite large portions of an expert declaration without sufficient explanation, cites claim charts in the declaration from its own…
  110. PTAB · July 24, 2014Unified Patents, Inc. v. PersonalWeb Techs., LLCInformative decision only: persuasive authority, not binding precedent. When a petition challenges claims on the same reference (Woodhill) that the Board already held unpatentable in one inter partes review (on appeal) and instituted…
  111. PTAB · July 21, 2014Focal Therapeutics, Inc. v. SenoRx, Inc.When cross-examination of a deponent has concluded and re-cross has not yet begun, the Testimony Guidelines' prohibition on counsel offering the witness conferring with the witness (Appendix D, 77 Fed. Reg. 48756, 48772) does not apply,…
  112. PTAB · July 8, 2014Prism Pharma Co. v. Choongwae Pharma Corp.Informative decision only: persuasive authority, not binding precedent. When the same prior art and substantially the same arguments that a petitioner relies on were previously presented to the Office during prosecution, including by a…
  113. PTAB · June 27, 2014Amneal Pharmaceuticals, LLC. v. Endo Pharmaceuticals Inc.Informative decision only: persuasive authority, not binding precedent. When a patent owner serves a motion for leave to amend its district court complaint with a proposed amended complaint attached, and the court has not yet granted…
  114. PTAB · June 27, 2014TRW Auto. U.S. LLC v. Magna Elecs., Inc.Informative decision only: persuasive authority, not binding precedent. When a patent owner serves a motion for leave to file an amended complaint with the proposed complaint attached, and the court has not yet granted leave, the…
  115. PTAB · May 21, 2014K-40 Elecs., LLC v. Escort, Inc.When a patent owner moves under 37 C.F.R. § 42.70 to present live testimony at final oral argument, the Board may grant it on a case-by-case basis for good cause, for example where the witness's demeanor is critical to assessing…
  116. PTAB · Apr. 25, 2014SecureBuy, LLC v. CardinalCommerce Corp.When a covered business method patent review petitioner (or real party in interest) filed a civil action challenging the validity of a claim of the patent before the date the petition was filed, the Board may not institute review and must…
  117. PTAB · Mar. 21, 2014Ex parte ThompsonInformative decision only: persuasive authority, not binding precedent. When an applicant submits objective evidence of nonobviousness (here, long-felt but unsolved need and failure of others), the Examiner must consider it together with…
  118. PTAB · Nov. 21, 2013Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.Informative decision only: persuasive authority, not binding precedent. When a petitioner files a later IPR petition on the same patent and claims that relies on prior art whose teachings are substantially the same as art and arguments…
  119. PTAB · Oct. 30, 2013Ex parte Whirlpool Corp.Informative decision only: persuasive authority, not binding precedent. When objective evidence of nonobviousness (industry praise, commercial success, long-felt need, copying) is tied to a commercial embodiment that practices the claim,…
  120. PTAB · Oct. 25, 2013Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd.When a patent owner argues in a preliminary response that the petitioner is barred by assignor estoppel because a named inventor is in privity with the petitioner, the Board cannot deny the petition on that basis. Section 311(a) provides…
  121. PTAB · Sept. 25, 2013ZTE Corp. v. ContentGuard Holdings Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner whose earlier timely petition on the same claims was not instituted files a second petition outside the one-year period of 35 U.S.C. § 315(b) with a…
  122. PTAB · Aug. 7, 2013Ariosa Diagnostics v. Isis Innovation Ltd.Informative decision only: persuasive authority, not binding precedent. When a deposition in an AIA trial will be conducted in a foreign language with interpreters, the Board will apply, in addition to 37 C.F.R. § 42.53, a twelve-point…
  123. PTAB · July 23, 2013Dung v. BuehlerInformative decision only: persuasive authority, not binding precedent. When a party in an interference seeks leave to file belatedly newly discovered evidence under 37 C.F.R. § 41.4(a)(2), it shows "excusable neglect" only by…
  124. PTAB · May 29, 2013Bloomberg Inc. v. Markets-Alert Pty LtdWhen a party moves for additional discovery in a covered business method patent review, the Board applies the good cause standard of 37 C.F.R. § 42.224 (requests "may be granted upon a showing of good cause as to why the discovery is…
  125. PTAB · May 24, 2013Ex parte TalkowskiInformative decision only: persuasive authority, not binding precedent. In deciding whether a reference is analogous art under § 103, the Board applies the two-step In re Wood test (Step 1: is the reference within the field of the…
  126. PTAB · May 8, 2013Ex parte MewherterWhen a claim recites a "machine-readable storage medium" (or computer-readable storage medium), the specification is silent as to its meaning, and extrinsic evidence shows that those of ordinary skill at the effective filing date…
  127. PTAB · Apr. 24, 2013Thomas v. PippinInformative decision only: persuasive authority, not binding precedent. When a party in a declared interference files a request to convert its involved application to a SIR (35 U.S.C. § 157; 37 CFR § 1.293) as an exhibit to a motion, and…
  128. PTAB · Mar. 6, 2013Thomas v. PippinInformative decision only: persuasive authority, not binding precedent. When a party appeals a final Board interference judgment to the Federal Circuit, the Board retains authority under Loshbough v. Allen to perform purely ministerial…
  129. PTAB · Mar. 5, 2013Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLCWhen a party moves for additional discovery in an inter partes review under 35 U.S.C. § 316(a)(5) and 37 C.F.R. § 42.51(b)(2), the Board will decide whether the discovery is "necessary in the interest of justice" by weighing five factors:…
  130. PTAB · Jan. 30, 2013Motorola Mobility LLC v. Patent of Michael ArnouseInformative decision only: persuasive authority, not binding precedent. When a patent owner has filed an infringement complaint but has not served the accused infringer with a summons, the one-year period of 35 U.S.C. § 315(b) (a petition…
  131. PTAB · Oct. 23, 2012Ex Parte MaedaInformative decision only: persuasive authority, not binding precedent. Examiners are discouraged from relying on "design choice" because it is generally a mere conclusion, not a substitute for obviousness reasoning based on factual…
  132. PTAB · May 21, 2012Ex parte BoerInformative decision only: persuasive authority, not binding precedent. When an applicant appeals a rejection and challenges the examiner's determination that a 37 C.F.R. § 1.131 declaration of prior invention is insufficient, the Board…
  133. PTAB · Apr. 17, 2012Ex parte JergInformative decision only: persuasive authority, not binding precedent. When claims relied upon in provisional obviousness-type double patenting rejections have been further prosecuted since the rejections were made, so that they clearly…
  134. PTAB · Feb. 28, 2012Ex parte SmithInformative decision only: persuasive authority, not binding precedent. When a reference lists a long set of possible additives so that some picking and choosing is needed to arrive at the claimed specific compound, the reference does not…
  135. PTAB · Feb. 24, 2012Panduit Corp. v. ADC TelecommsInformative decision only: persuasive authority, not binding precedent. When a requester in an inter partes reexamination does not timely propose a rejection of claims the patent owner added by amendment, and the examiner therefore does…
  136. PTAB · Dec. 9, 2011Ex parte Vegas Amusements, Inc.Informative decision only: persuasive authority, not binding precedent. In ex parte reexamination, where claims use the open-ended transition "comprising" and recite "a" processor device, the Board gives "a" its usual meaning of "one or…
  137. PTAB · May 16, 2011Ex parte Bayer Cropscience, LPInformative decision only: persuasive authority, not binding precedent. When a method claim's body recites the same compound and the same steps as a prior art reference, and the preamble states only a purpose (here, "attracting insects")…
  138. PTAB · May 3, 2011Abbott Diabetes Care, Inc. v. Patent of Dexcom, Inc.Informative decision only: persuasive authority, not binding precedent. When an examiner in an inter partes reexamination determines that a proposed rejection based on a particular reference does not raise a substantial new question of…
  139. PTAB · Mar. 30, 2011Belkin Int’l, Inc. v. OptimumPath, LLCInformative decision only: persuasive authority, not binding precedent. When the Director (or, on petition under 37 C.F.R. § 1.927, the Director's decision) determines that no substantial new question of patentability is raised for…
  140. PTAB · Oct. 29, 2010California Institute of Technology v. Enzo Life Sciences, Inc.Informative decision only: persuasive authority, not binding precedent. When a judgment has been entered in an interference and an involved file is open to the public under 37 C.F.R. § 1.11 (here, an involved issued patent), Board Rule…
  141. PTAB · Oct. 21, 2010Ex parte Antor Media Corp .Informative decision only: persuasive authority, not binding precedent. When a patent owner in ex parte reexamination argues that an anticipatory prior art reference is non-enabling, the Board will assess enablement under the Wands…
  142. PTAB · June 22, 2010Ex parte MonclaWhen the Board reverses all of the examiner's prior-art rejections under 35 U.S.C. § 102(b) and § 103(a) and the only remaining rejection on appeal is a provisional non-statutory obviousness-type double patenting rejection over claims of…
  143. PTAB · June 2, 2010Ex Parte QuistWhen an appellant argues on appeal that the examiner erred in finding obviousness based in part on proffered secondary-considerations evidence, the Board must review the obviousness conclusion anew on the totality of the record, weighing…
  144. PTAB · Mar. 18, 2010Ex parte Baxter Int’l, Inc . 2009-006493 (March 18, 2010) [considering expert testimony]Informative decision only: persuasive authority, not binding precedent. When an appellant offers expert or witness testimony to show skepticism or lack of a reasonable expectation of success, the Board may give it little weight if the…
  145. PTAB · Feb. 26, 2010Ex parte FryeWhen an appellant contests only particular findings or issues in an examiner's rejection, the Board reviews those contested findings anew for error in light of all the evidence and argument on that issue, but filing an appeal does not…
  146. PTAB · Jan. 26, 2010Ex parte FletcherInformative decision only: persuasive authority, not binding precedent. When an examiner takes Official Notice in an Office Action and the applicant's next response contains no traversal within the proper time frame, the Board may treat…
  147. PTAB · Oct. 1, 2009Ex parte RodriguezWhen a claim to a computer-implemented function is written in means-plus-function form, or uses a nonce term such as "generator," "builder" or "environment" that is not recognized as the name of structure, and the specification discloses…
  148. PTAB · Aug. 10, 2009Ex parte BelinneInformative decision only: persuasive authority, not binding precedent. When an examiner has made specific, explicit fact findings mapping each argued claim limitation to identified teachings of the reference, an appellant who merely…
  149. PTAB · Aug. 6, 2009Ex parte GivensInformative decision only: persuasive authority, not binding precedent. When an applicant's specification does not expressly define a claim term but describes the term as a specific type of processing known in the art and sets out the…
  150. PTAB · July 22, 2009Ex parte MoonInformative decision only: persuasive authority, not binding precedent. When an examiner construes a claim limitation in a way that is inconsistent with the specification (here, drawings showing a heat dissipater not coupled to an entire…
  151. PTAB · July 22, 2009Ex parte MaedaInformative decision only: persuasive authority, not binding precedent. When the Examiner finds that the claimed and prior art compositions are identical (a finding the appellant does not contest), the burden shifts to the applicant to…
  152. PTAB · June 19, 2009Ex parte FrenkInformative decision only: persuasive authority, not binding precedent. When a claim term of approximation such as "substantially equal" is construed under the broadest reasonable interpretation, the Board will not accept an examiner's…
  153. PTAB · June 5, 2009Amgen, Inc. v. Human Genome Sciences, Inc.Informative decision only: persuasive authority, not binding precedent. When an interference party's utility-based unpatentability motion has been granted and the Board has entered judgment, the Board may, in its case-specific discretion,…
  154. PTAB · May 20, 2009Ex parte DanielsInformative decision only: persuasive authority, not binding precedent. When an applicant submits a 37 C.F.R. § 1.131 affidavit that only asserts in broad terms reduction to practice, or conception plus diligence, before the reference's…
  155. PTAB · May 6, 2009Ex parte JanakiramanInformative decision only: persuasive authority, not binding precedent. When the Board affirms an independent claim as obvious solely because an unchallenged dependent claim was affirmed as obvious (and the examiner never rejected the…
  156. PTAB · Mar. 23, 2009Rodriguez Rilo v BenedictInformative decision only: persuasive authority, not binding precedent. When a senior party suggests that a junior-party applicant's Bd.R. 202 statement fails to show interfering subject matter, an administrative patent judge need not…
  157. PTAB · Feb. 6, 2009Barany v. McGallInformative decision only: persuasive authority, not binding precedent. When all of a senior-party patentee's claims have been held unpatentable but the junior-party applicant has not yet proven it invented the count's subject matter…
  158. PTAB · Feb. 3, 2009Ex parte CatlinWhen a claim limitation uses "means" and recites no structure to perform the function in its entirety, so that 35 U.S.C. § 112, sixth paragraph is invoked, and the function is computer-implemented, the Board must look to the specification…
  159. PTAB · Feb. 2, 2009Ex parte Sami Chems. & Extracts, Ltd .Informative decision only: persuasive authority, not binding precedent. When the Board affirms an examiner's rejection using a claim construction not expressed in the examiner's exact words, the affirmance is not a new ground of rejection…
  160. PTAB · Nov. 19, 2008Ex parte MiyazakiWhen a claim pending before the USPTO is amenable to two or more plausible claim constructions, the Board may hold it indefinite under 35 U.S.C. § 112, second paragraph, and need not find it "insolubly ambiguous" or "not amenable to…
  161. PTAB · Nov. 13, 2008Ex parte ChuangInformative decision only: persuasive authority, not binding precedent. When a prior art reference discloses an amino acid sequence 100% identical to a claimed isolated protein, the Board may find anticipation under § 102(b) even though…
  162. PTAB · Nov. 3, 2008Ex parte JelláWhen an ex parte applicant offers secondary-considerations evidence to rebut a prima facie case of obviousness, the applicant bears the burden of establishing a nexus between the claimed invention and that evidence, and the evidence must…
  163. PTAB · Sept. 19, 2008Intellectual Concepts, LLC v. Zannier, Inc.Informative decision only: persuasive authority, not binding precedent. When a party relies on an affidavit that does not contain a statement that the affiant will make himself available in the United States for cross-examination, the…
  164. PTAB · July 31, 2008Ex parte BeinekeInformative decision only: persuasive authority, not binding precedent. When an applicant seeks a plant patent under 35 U.S.C. § 161 for a plant discovered in a cultivated-looking setting such as a yard, the Board will read the exclusion…
  165. PTAB · July 30, 2008Ex parte BeinekeInformative decision only: persuasive authority, not binding precedent. Under 35 U.S.C. § 161, which excludes "a plant found in an uncultivated state," the Board held that the "state" refers to the condition of the plant itself and not…
  166. PTAB · July 23, 2008Ex parte WhalenWhen the prior art teaches away from the claimed solution, as where every reference favors low viscosity and the claims require a much higher viscosity, an examiner cannot establish obviousness merely by asserting that a known composition…
  167. PTAB · May 29, 2008Ex parte KimInformative decision only: persuasive authority, not binding precedent. When a claim recites a relative limitation (here, that a finger-to-via "width ratio ... is reduced") and neither the claim nor the specification gives the artisan…
  168. PTAB · May 29, 2008Ex parte McCannInformative decision only: persuasive authority, not binding precedent. When an ex parte applicant relies on commercial success or long-felt need to rebut a prima facie case of obviousness under Graham, the applicant bears the burden of…
  169. PTAB · May 13, 2008Ex parte HansenInformative decision only: persuasive authority, not binding precedent. When a claimed product differs from the prior art only in the content of printed matter, the Board applies the Gulack test and gives the printed matter no patentable…
  170. PTAB · Apr. 29, 2008Ex parte POD-NERS, L.L.C .Informative decision only: persuasive authority, not binding precedent. When a claim to a plant variety or its seed relies on a seed deposit and the record (the patent's own statements, declarations and counsel's admissions) shows the…
  171. PTAB · Mar. 31, 2008Ex parte BobrowskiInformative decision only: persuasive authority, not binding precedent. When claim scope is so unclear, even in light of the specification, that applying prior art would require "speculation as to the meaning of the terms employed and…
  172. PTAB · Mar. 31, 2008Ex parte FuWhen the prior art discloses a genus containing a broad but finite number of known options that predictably solve the same problem and includes the claimed species, the Board may find the species prima facie obvious under an "obvious to…
  173. PTAB · Mar. 19, 2008Lalonde v. LiInformative decision only: persuasive authority, not binding precedent. When a party's motions list in an interference includes language reserving a right to modify the list to add miscellaneous, preliminary or other motions or responsive…
  174. PTAB · Mar. 11, 2008Ex parte PorroInformative decision only: persuasive authority, not binding precedent. When a claim recites a genus of proteins defined by both a percentage sequence identity to a reference sequence (here at least 90% identity to SEQ ID NO: 11) and a…
  175. PTAB · Mar. 4, 2008Ryan v. YoungInformative decision only: persuasive authority, not binding precedent. In an interference with multiple motions, an exhibit is "in evidence" only if it has been filed and is listed and discussed in the motion, opposition or reply, and…
  176. PTAB · Jan. 31, 2008Ex parte LettsWhen an appellant in an ex parte appeal offers to cancel a claim only on condition that the Board take or refrain from taking action on other claims, the offer is ineffective and the claim remains in the appeal. The Board does not enter…
  177. PTAB · Jan. 28, 2008Ex parte NehlsWhen a claim to a computer-based system differs from the prior art system only in the content of the sequence data stored in its data storage means, and that data does not functionally change how the computer performs the search (the…
  178. PTAB · Jan. 25, 2008Rabbani v. NotomiInformative decision only: persuasive authority, not binding precedent. When a movant in an interference priority phase must make out a prima facie case in its motion, the Board may deny leave to file new declaration evidence with a reply…
  179. PTAB · Nov. 13, 2007Ex parte LazzaraInformative decision only: persuasive authority, not binding precedent. When a pending claim uses a term of degree such as "substantially uniform" and neither the claims, the specification, nor record evidence supplies a standard for…
  180. PTAB · Nov. 13, 2007Ex parte HicksInformative decision only: persuasive authority, not binding precedent. When an examiner rejects claims under § 112, first paragraph, for lack of enablement of full scope, the examiner bears the burden of a prima facie case weighing the…
  181. PTAB · Aug. 22, 2007Ex parte DartInformative decision only: persuasive authority, not binding precedent. When prior art references address the same problem as the claimed invention (here, reclosure of a drink opening using a strap-connected plug, a mechanical closure…
  182. PTAB · July 27, 2007Ex parte McBreartyInformative decision only: persuasive authority, not binding precedent. When the prior art identifies a design need or problem (here, Web latency) and a finite number of identified, predictable solutions, the Board may conclude that…
  183. PTAB · July 25, 2007Ex parte RighiInformative decision only: persuasive authority, not binding precedent. When an obviousness rejection rests on combining familiar elements that are unaltered and perform the same function, the Board may affirm on less than all of the…
  184. PTAB · July 3, 2007Ex parte CatanWhen a claimed structure is a known prior art structure altered by the mere substitution of one known element for another known element performing the same function (here, bioauthentication in place of a PIN or password), the Board may…
  185. PTAB · June 25, 2007Ex parte SmithWhen an examiner shows that the claimed structure's other limitations are expressly disclosed in a single reference and the specification indicates a claimed capability (here, thickness rendering an insert passable through a copier or…
  186. PTAB · May 31, 2007Ex parte KubinWhen the prior art supplies a known problem (isolating a particular cDNA), a limited number of conventional methodologies for solving it, and a reasonable expectation that at least one will succeed, the Board may treat the claimed product…
  187. PTAB · May 4, 2007Ex parte WellerdieckInformative decision only: persuasive authority, not binding precedent. When a reissue applicant seeks to expand the term of the original patent (here, by correcting continued prosecution applications filed under 37 C.F.R. § 1.53(d) to…
  188. PTAB · Apr. 30, 2007Ex parte MayInformative decision only: persuasive authority, not binding precedent. When a U.S. patent application publication under 35 U.S.C. § 122(b) claims § 120 benefit of a parent and the relied-upon subject matter is described in the parent in…
  189. PTAB · Apr. 25, 2007Ashurst v. BruggerInformative decision only: persuasive authority, not binding precedent. When a party seeks additional discovery under Bd.R. 150(c)(1), it must show the discovery is "in the interests of justice," a high standard requiring specific bases…
  190. PTAB · Apr. 18, 2007Guthrie v. EspiauInformative decision only: persuasive authority, not binding precedent. Under Bd.R. 204(a)(1), a party may not submit evidence of priority beyond its accorded benefit unless it files a statement setting forth "all bases" on which it…
  191. PTAB · Mar. 27, 2007Ex parte BatteuxInformative decision only: persuasive authority, not binding precedent. When a prior art reference discloses administering the claimed compound to a patient within a broadly construed method claim, the Board may find inherent anticipation…
  192. PTAB · Mar. 14, 2007Ex parte AdamsInformative decision only: persuasive authority, not binding precedent. When a reissue is filed more than two years after grant and the original patent claim is indefinite because it contains contradictory limitations (an element both…
  193. PTAB · Mar. 9, 2007Perego v. DrehmelInformative decision only: persuasive authority, not binding precedent. When a party objects to evidence under the standing order and the opponent responds by serving amended or supplemental exhibits to overcome the objection, the Board…
  194. PTAB · Mar. 6, 2007Rowells v. VichinskyInformative decision only: persuasive authority, not binding precedent. When a junior party responding to a Bd.R. 202(d) order to show cause relies on derivation, it must show by a preponderance of the evidence conception plus a…
  195. PTAB · Feb. 28, 2007Karim v. JobsonInformative decision only: persuasive authority, not binding precedent. When an interference has been resolved against a party on priority and on unpatentability grounds that answer the Examiner's "yes" or "no" question (do the patent…
  196. PTAB · Jan. 30, 2007Ex parte JudInformative decision only: persuasive authority, not binding precedent. When the Board reviews an obviousness rejection under 35 U.S.C. 103(a), the Graham skill-level inquiry need not be made in any prescribed format or expressly labeled,…
  197. PTAB · Sept. 21, 2006Ex parte KrausInformative decision only: persuasive authority, not binding precedent. In a reissue appeal under 35 U.S.C. 251, the examiner makes a prima facie case of recapture by showing that the reissue claims fall within Substeps (1) or 3(a) of In…
  198. PTAB · May 17, 2006Ex parte TullisInformative decision only: persuasive authority, not binding precedent. When an application claim is a genus and a claim of the applicant's earlier patent is a species within it, the later genus claim is anticipated by, and not patentably…
  199. PTAB · Apr. 6, 2006Ex parte WrightInformative decision only: persuasive authority, not binding precedent. When an applicant offers secondary-considerations evidence (commercial success, copying, long-felt need) against a prima facie case of obviousness, the Board…
  200. PTAB · Feb. 22, 2006Ex parte KrausInformative decision only: persuasive authority, not binding precedent. In ex parte examination of a reissue application, when claims are broader than the patent claims in a limitation that was added by amendment (including by canceling a…
  201. PTAB · Jan. 31, 2006Ex parte GleaveInformative decision only: persuasive authority, not binding precedent. In a written description rejection under the first paragraph of 35 U.S.C. § 112, it is the examiner's "initial burden [to] present[] evidence or reasons why persons…
  202. PTAB · Dec. 19, 2005Ex parte ShawInformative decision only: persuasive authority, not binding precedent. When the Board has entered a merits decision in an interference and the applicant's 35 U.S.C. § 146 civil action seeking review was dismissed (the time for appeal…
  203. PTAB · Oct. 20, 2005Ex parte AshkenaziInformative decision only: persuasive authority, not binding precedent. When a patent qualifies as prior art under 35 U.S.C. § 102(e) and the applicant offers no evidence that the reference's own claims lack § 112 support, the reference…
  204. PTAB · Aug. 19, 2005Ex parte MathiasInformative decision only: persuasive authority, not binding precedent. When a claim differs from the prior art only in nonfunctional descriptive material (here, the particular broadcasted television image, a sporting event rather than…
  205. PTAB · June 30, 2005Ex parte CurryInformative decision only: persuasive authority, not binding precedent. When a claimed method, computer or storage medium differs from the prior art only in the content of the data (here "wellness-related" data) or a label (here a…
  206. PTAB · Nov. 19, 2004Kaufman v. TaliehInformative decision only: persuasive authority, not binding precedent. When a settlement agreement filed with a joint request to terminate an interference contains a paragraph in which the junior party concedes priority to the senior…
  207. PTAB · May 21, 2004Ex parte ShawInformative decision only: persuasive authority, not binding precedent. When an ex parte applicant lost an issue (here, enablement of claimed apparatus) in a final inter partes interference decision and the four issue-preclusion elements…
  208. PTAB · Oct. 29, 2003Schaenzer v. KnightInformative decision only: persuasive authority, not binding precedent. When all parties to an interference settle and jointly move for relief such as designating claims as not corresponding to the count, the Board treats the motion like…
  209. PTAB · Sept. 16, 2003Stiller v. HeidInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(b) for judgment of no interference-in-fact, the movant (both parties, if the motion is joint, and even if unopposed) bears the…
  210. PTAB · May 15, 2003Noelle v. ArmitageInformative decision only: persuasive authority, not binding precedent. When, at the close of decisions on preliminary motions, one party has no patentable claims corresponding to the count and priority has been developed no further than…
  211. PTAB · May 12, 2003Genise v. DesautelsInformative decision only: persuasive authority, not binding precedent. When a moving party in an interference relies on a prior art reference or on a general incorporation by reference, the Board will not search the record or credit…
  212. PTAB · Apr. 10, 2003Herman v. BarnesInformative decision only: persuasive authority, not binding precedent. When a party in an interference over inventorship of a patent (the party who claims to be sole inventor) seeks judgment that the patent names the wrong inventors, it…
  213. PTAB · Mar. 28, 2003Wertz v. RoseInformative decision only: persuasive authority, not binding precedent. Where the parties agree to arbitrate an interference under 37 CFR § 1.690 and agree that the arbitrator's decisions are binding and that the Board may enter judgment…
  214. PTAB · Mar. 19, 2003Sanada v. ReynoldsInformative decision only: persuasive authority, not binding precedent. When a claim element uses purely functional language to define a structural component without the word "means," and the term is neither a recognized name for…
  215. PTAB · Mar. 18, 2003Strelchenko v. University of MassachusettsInformative decision only: persuasive authority, not binding precedent. When all of an applicant's involved claims were made more than a year after the opposing patent issued, 35 U.S.C. § 135(b)(1) bars them unless a claim the applicant…
  216. PTAB · Mar. 6, 2003Rohr v. McNultyInformative decision only: persuasive authority, not binding precedent. When an interference party moves under 37 C.F.R. § 1.633(c)(2) to add claims corresponding to the count and complies with the terms of 37 C.F.R. § 1.637, the Board is…
  217. PTAB · Feb. 3, 2003DeBoer v. GordonInformative decision only: persuasive authority, not binding precedent. When a movant (here, the parties jointly) shows that its involved claims would have been neither anticipated nor obvious over the other party's involved claims, so…
  218. PTAB · Jan. 30, 2003Wang v. KovesdiInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR 1.628(a) to correct a preliminary statement after seeing its opponent's statement, and the correction carries its invention dates back…
  219. PTAB · Jan. 1, 2003Sullivan v. BingelInformative decision only: persuasive authority, not binding precedent. When a party concedes priority and judgment is entered against all of its claims in an interference, leaving only patentability questions that have not been fully…
  220. PTAB · Dec. 31, 2002Gibson v. SturmanInformative decision only: persuasive authority, not binding precedent. When a party in an interference asks for a one-day extension because of an emergency and opposing counsel unreasonably withholds or conditions consent, the…
  221. PTAB · Dec. 5, 2002Nagaraj v. RickerbyInformative decision only: persuasive authority, not binding precedent. When a party asks to file a motion in limine under § 51 of the Standing Order (Paper 2) well into the preliminary motions phase of an interference, rather than before…
  222. PTAB · Oct. 18, 2002Kundu v. RagunathanInformative decision only: persuasive authority, not binding precedent. When a junior party under a Rule 617 show-cause order has a prima facie earlier actual reduction to practice but filed about thirty-five months later and shortly…
  223. PTAB · June 11, 2002University of Washington v. Eli Lilly & Co.Informative decision only: persuasive authority, not binding precedent. When deciding a motion for no interference-in-fact, the Board compares the parties' corresponding claims and, applying 37 CFR § 1.601(n), treats each party's claimed…
  224. PTAB · June 10, 2002Strelchenko v. CampbellInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(a) to hold an opponent's claims barred under 35 U.S.C. § 135(b) by reference to a patent that is not involved in the…
  225. PTAB · Apr. 26, 2002Noelle v. ArmitageInformative decision only: persuasive authority, not binding precedent. When interference parties seek suspension and offer to terminally disclaim for a period equal to the suspension, the Board may permit it, but permission is not…
  226. PTAB · Apr. 23, 2002LeVeen v. EdwardsInformative decision only: persuasive authority, not binding precedent. When an APJ has ordered that a party's principal brief at final hearing refer only to arguments and facts presented in its original motion (read to include the…
  227. PTAB · Apr. 2, 2002University of New Mexico v. Fordham UniversityInformative decision only: persuasive authority, not binding precedent. Where a party seeks disqualification of opposing counsel in an interference based on a current-client conflict, the Board does not apply a per se or strict-liability…
  228. PTAB · Mar. 29, 2002Rose v. FrazerInformative decision only: persuasive authority, not binding precedent. In an interference, a motion in limine may be used to seek exclusion of exhibits, and a party's affidavit or declaration served in an earlier, administratively…
  229. PTAB · Mar. 26, 2002Han v. LivakInformative decision only: persuasive authority, not binding precedent. Under 35 U.S.C. § 135(a), which says the Board "may determine questions of patentability," the Board may decline to decide a fairly raised patentability motion, here…
  230. PTAB · Mar. 11, 2002Kopf-Sill v. YagerInformative decision only: persuasive authority, not binding precedent. When a party seeks to belatedly file preliminary motions asserting unpatentability over prior art that the opponent already asserted against the movant's own claims,…
  231. PTAB · Jan. 4, 2002Gregory v. TsuiInformative decision only: persuasive authority, not binding precedent. When a party attacks an opponent's accorded benefit in an interference, a best-mode defect in the benefit application does not defeat its status as a constructive…
  232. PTAB · Jan. 2, 2002Bronshtein v. RoserInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(b) for judgment of no interference-in-fact, it bears the burden under 37 CFR § 1.637(a), by a preponderance of the evidence,…
  233. PTAB · Jan. 1, 2002Sauer, Inc. v. Kanzaki Kokyukoki Mfg.Informative decision only: persuasive authority, not binding precedent. When a party in an interference moves under 37 CFR § 1.634 to correct inventorship as provided by § 1.48, it bears the burden under 37 CFR § 1.637(a) of proving by a…
  234. PTAB · Jan. 1, 2002Preputnick v. ProvencherInformative decision only: persuasive authority, not binding precedent. When a party relies on an expert declaration for a written description challenge, and the expert states a conclusion without disclosing the underlying facts or data…
  235. PTAB · Jan. 1, 2002Spalding v. HartsellInformative decision only: persuasive authority, not binding precedent. In an interference, a movant asserting that a document is a "printed publication" under 35 U.S.C. § 102 must itself allege specific facts, tied to particular…
  236. PTAB · Jan. 1, 2002LeVeen v. EdwardsInformative decision only: persuasive authority, not binding precedent. When a party seeks review at final hearing of an interlocutory decision, it may not change the thrust of the arguments it made to the administrative patent judge, and…
  237. PTAB · Dec. 18, 2001Bronshtein v. RoserInformative decision only: persuasive authority, not binding precedent. The only point the text supports is that when a motion to amend claims under 37 CFR § 1.633(i) is contingent on the grant of a preliminary motion for judgment of no…
  238. PTAB · Dec. 17, 2001Rose v. FrazerInformative decision only: persuasive authority, not binding precedent. When a party in an interference seeks leave to correct a preliminary statement date, and the allegation (here, communication "on July 20 to 26, 1991" in support of…
  239. PTAB · Nov. 20, 2001Ellsworth v. MooreInformative decision only: persuasive authority, not binding precedent. When an inventor who earlier signed a declaration naming a joint inventor later claims sole inventorship in an interference and bears the burden by a preponderance of…
  240. PTAB · Nov. 6, 2001Sever v. GlickmanInformative decision only: persuasive authority, not binding precedent. When a junior party applicant whose showing under Rule 608(b) was found insufficient responds to a Rule 617(a) order to show cause, it must prove by clear and…
  241. PTAB · Oct. 31, 2001Dionne v. LiottaInformative decision only: persuasive authority, not binding precedent. When parties define the level of ordinary skill by abstract references to academic degrees and years of laboratory experience, the Board will give those references…
  242. PTAB · Oct. 31, 2001Eli Lilly & Co. v. CameronInformative decision only: persuasive authority, not binding precedent. When a party to an interference voluntarily requests entry of adverse judgment under 37 CFR § 1.662(a) but tries to characterize, limit or reserve rights in the…
  243. PTAB · Oct. 19, 2001Noelle v. LedermanInformative decision only: persuasive authority, not binding precedent. The question of no interference-in-fact is a one-way distinctiveness test, so a movant prevails by showing either that its claims are not anticipated or rendered…
  244. PTAB · Oct. 16, 2001Tseng v. Doroodian-ShojaInformative decision only: persuasive authority, not binding precedent. When a party moves for no interference-in-fact, it bears the burden of showing patentable distinctness in either direction: either that none of its claims…
  245. PTAB · Oct. 15, 2001Bronshtein v. RoserInformative decision only: persuasive authority, not binding precedent. Under 37 CFR § 1.672(i), in an unusual circumstance and on a showing that testimony cannot be taken in accordance with the ordinary rules, an administrative patent…
  246. PTAB · July 24, 2001Ondeyka v. ShelleyInformative decision only: persuasive authority, not binding precedent. When a patent named in a declared interference had expired (here for non-payment of maintenance fees) before the interference was declared, the Board lacks subject…
  247. PTAB · July 11, 2001Khavari v. D.T.Informative decision only: persuasive authority, not binding precedent. When a party's interference motions list, which is used to set the motions schedule under 37 C.F.R. § 1.636(a), is filed late and contains argument rather than a…
  248. PTAB · June 27, 2001Rohrman v. AltInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(c)(3) to have an opponent's claim designated as corresponding to a count, and that claim is directed to the same patentable…
  249. PTAB · June 4, 2001Wojciak v. NishiyamaInformative decision only: persuasive authority, not binding precedent. In an interference, data in the specification of an involved application or patent is not admissible per se to prove that the experiments were carried out as…
  250. PTAB · May 25, 2001Sauer, Inc. v. Kanzaki Kokyukoki Mfg.When a party moves under 37 CFR § 1.633(c)(1) to change the count to one broader than the sum of what each party has claimed, the Board will not adopt the count without a compelling reason, and a mere showing that the movant's best or…
  251. PTAB · May 11, 2001Anderson v. EppsteinInformative decision only: persuasive authority, not binding precedent. When a party petitions under 35 U.S.C. § 32 and 37 CFR § 10.130(b) to disqualify opposing counsel in an interference based on a former representation, the movant…
  252. PTAB · May 11, 2001Furman v. ChengInformative decision only: persuasive authority, not binding precedent. In an interference, benefit for the purpose of priority is accorded with respect to the count, not the claims corresponding to it, so a party need only show that its…
  253. PTAB · Apr. 30, 2001Glaxco Wellcome, Inc. v. CabillyInformative decision only: persuasive authority, not binding precedent. A preliminary motion in an interference must make out a prima facie case for relief, and if it fails to do so it may not be necessary to consider any opposition or…
  254. PTAB · Feb. 23, 2001Wojciak v. NishiyamaInformative decision only: persuasive authority, not binding precedent. When cross-examination testimony in an interference will be taken through an interpreter, the Board will govern the deposition by guidelines under which the party…
  255. PTAB · Jan. 9, 2001Sauer, Inc. v. Kanzaki Kokyukoki Mfg.When adding a patent to a pending interference would result in a patent versus patent conflict, the Board lacks jurisdiction under 35 U.S.C. § 135(a) to add it, even if one party also has an involved application claiming the same…
  256. PTAB · Jan. 1, 2001Yurek v. YamadaInformative decision only: persuasive authority, not binding precedent. An interference-in-fact exists when at least one claim of a party and one claim of an opponent are directed to the same patentable invention, meaning each is…
  257. PTAB · Dec. 8, 2000LeVeen v. EdwardsWhen a party files a preliminary motion for judgment under 37 CFR § 1.633(a) relying on a § 102(a) or § 102(e) reference and the opponent alleges in its preliminary statement a date of invention prior to the reference's prior art date,…
  258. PTAB · Dec. 8, 2000LeVeen v. EdwardsWhen a party's interference preliminary motion for judgment under 37 CFR § 1.633(a) fails to follow the procedures in the Notice Declaring Interference (no incorporation of arguments by reference, facts set out in the motion,…
  259. PTAB · Nov. 21, 2000Cromlish v. D.Y.When a party moves under 37 CFR § 1.633(g) to attack the priority benefit accorded to an opponent in an interference on the ground that the earlier application fails the best mode requirement of 35 U.S.C. § 112[1], the Board will deny the…
  260. PTAB · Oct. 18, 2000Glaxco Wellcome, Inc. v. CabillyWhen a party seeks additional discovery to support a preliminary motion for judgment of unpatentability, and the discovery targets an examiner's ex parte allowance rationale (a declaration relied on in prosecution and examiner interviews)…
  261. PTAB · Sept. 7, 2000Shiokawa v. MaienfischWhen a party seeks additional discovery under 37 CFR § 1.687(c) in an interference, the Board will not find it to be in the interest of justice if the party supplies no evidence (or fails to point to the relevant part of the evidence)…
  262. PTAB · Sept. 7, 2000G.N. v. S.W.When a party moves in an interference, including an unopposed preliminary motion filed after settlement to substitute a count, the party bears the burden under 37 CFR § 1.637(a) to show entitlement to the relief, and the Board will not…
  263. PTAB · May 22, 2000Charlton v. RosensteinWhen a three-judge motions panel has decided preliminary motions in an interference, review at final hearing is effectively reconsideration of the panel's own decision on the same record, so a party seeking review must show the panel…
  264. PTAB · May 10, 2000Nevel v. HoellerWhen a party moves under 37 CFR § 1.687(c) for additional discovery, it must set forth a prima facie case showing a threshold level of suspicion sufficient to justify discovery in the interest of justice; if its motion rests on…
  265. PTAB · May 2, 2000Matsushima v. H.A.When an interference party alleges inequitable conduct whose materiality issues largely overlap with a pending unpatentability motion, and priority or patentability decisions may moot the allegation, the Board may defer discovery on…
  266. PTAB · Apr. 25, 2000Hillman v. ShyamalaWhen a party moves for benefit of an earlier application in an interference, the movant bears the burden of proof under 37 CFR § 1.637(a) and must include in the motion a full statement of the reasons why the relief should be granted;…
  267. PTAB · Mar. 16, 2000Lee v. McIntyreWhen a party moves under 37 CFR § 1.633(c)(1) to substitute a narrower count, the Board will not apply a per se rule that the count must be as broad as the broadest patentable claim designated as corresponding to it. Under Rule 606 the…
  268. PTAB · Feb. 28, 2000Tropix, Inc. v. Lumigen, Inc.When a party seeks "additional discovery" under 37 CFR § 1.687(c) in an interference, it must establish that the interest of justice requires the discovery, and the Board will not order it where the party asserts it already has a prima…
  269. PTAB · Feb. 22, 2000Waterman v. BirbaumWhen a pending application was expressly abandoned before the interference was declared, the Board lacks subject matter jurisdiction because 35 U.S.C. § 135(a) does not authorize an interference between an abandoned application and an…
  270. PTAB · Nov. 23, 1999Therriault v. GarbeWhen a junior party in an interference needs testimony or documents from a non-party who will not appear without a subpoena, and the parties would be prejudiced by the usual order of presenting the case-in-chief, the Board may authorize a…
  271. PTAB · Nov. 17, 1999Anderson v. Dionex Corp.Under 37 CFR § 1.645(d), which provides that "[a]n administrative patent judge may stay proceedings in an interference," a stay pending a parallel district court infringement action is committed to the administrative patent judge's…
  272. PTAB · Nov. 16, 1999Winter v. FujitaWhen an interference-in-fact issue is raised by a preliminary motion under 37 CFR § 1.633(b), the Board must apply a two-way patentability analysis. Each party's claimed invention is presumed prior art to the other, and the claims are the…
  273. PTAB · Nov. 10, 1999Housey v. BermanWhen deciding whether an applicant had, before the one-year critical date, a claim to "the same or substantially the same subject matter" as a patent claim under 35 U.S.C. § 135(b), the Board must not apply the obviousness standard of 35…
  274. PTAB · Nov. 1, 1999Davis v. HendronWhen an interference is declared between an application and a patent and a party moves under 37 CFR § 1.635 to add under 37 CFR § 1.642 a further patent such that the Board would lack jurisdiction under 35 U.S.C. § 135(a) to resolve…
  275. PTAB · Apr. 30, 1999Nau v. OhuchidaWhen the Board announces, essentially for the first time, that a party opposing a preliminary motion may under certain unusual circumstances bear a de facto burden of proof, and the opponent filed its opposition without notice of that…
  276. PTAB · Apr. 26, 1999B.M. v. H.G.When counsel stipulate different times for taking action in the Trial Section's preliminary motion phase, the stipulation cannot extend TIME PERIODS 1 through 6 beyond TIME PERIOD 7 or TIME PERIOD 8, and counsel cannot stipulate any…
  277. PTAB · Apr. 16, 1999R.C. v. T.I.When a party's own expert has formed a reasonable suspicion before the evidentiary testimony in an interference preliminary-motion proceeding, but the party does not raise the need for further testing (here, ink testing of a day planner…
  278. PTAB · Apr. 14, 1999Nau v. OhuchidaWhen an opposing party responds to a fact alleged in a motion or opposition by asserting that the fact is "irrelevant" instead of admitting it, denying it, or stating that it is unable to admit or deny it, the response does not comply…
  279. PTAB · Apr. 13, 1999Wolf v. TomaliaWhen a patent involved in an interference is also the subject of a pending ex parte reexamination, the Board will not stay the interference, fold the reexamination into it, or let the opposing party contest the reexamined claims inter…
  280. PTAB · Apr. 5, 1999Gray v. HeeresWhen a party files an abandonment of the contest under 37 CFR § 1.662(a), the Board treats the filing as a request for entry of an adverse judgment and enters a judgment on the merits against that party, even if the filing says the…
  281. PTAB · Mar. 10, 1999Johnston v. BeachyWhen a party in an interference does not notify the Trial Section within the eighteen days set by the order forwarding file requests to the Office of Public Records that ordered involved or benefit files were not received, the failure to…
  282. PTAB · Feb. 24, 1999Griggs v. RoseWhen the examiner has already determined, before declaration, that an involved application claim is unpatentable (here under 35 U.S.C. § 112, first paragraph, for lack of written description) and that determination has not been overcome…
  283. PTAB · Feb. 9, 1999Dadgar v. GillWhen parties to an interference report that scheduling difficulties have prevented settlement discussions within the time set in the Notice Declaring Interference, and the report gives no effort made or date for the discussions, the Board…
  284. PTAB · Dec. 23, 1998F.M.W. v. D.A.T.When a practitioner sends a communication to an administrative patent judge handling an interference without serving the opposing party's attorney of record, and the communication can be viewed as supplementing arguments in a filed paper,…
  285. PTAB · Dec. 2, 1998A.S. v. B.R.When a practitioner in an interference communicates with an administrative patent judge or Board administrator on the merits, or on procedure affecting the merits, or to change the status quo of the interference, without service on or…
  286. PTAB · Nov. 10, 1998Singh v. BrakeWhen a party shows by a preponderance of the evidence, through counsel's representations in a petition and orally in a conference call, that it did not receive a copy of a merits panel's final decision, the Trial Section may reset the…
  287. PTAB · Feb. 18, 1998Bamberger v. CheruvuInformative decision only: persuasive authority, not binding precedent. When an applicant in an interference asserts that a patent claim is unpatentable, the applicant bears the burden of proving its case by a preponderance of the…
  288. PTAB · Aug. 13, 1997Basmadjian v. LandryWhen an applicant's Rule 608(b) showing is reviewed in an interference summary judgment proceeding under 37 CFR § 1.617, the applicant must establish a prima facie case, meaning facts shown by a preponderance of the evidence (clear and…
  289. PTAB · Jan. 31, 1996Ex parte BhideWhen a specification states a utility (or "how to use") that corresponds in scope to the claimed subject matter, it must be taken as sufficient under 35 U.S.C. § 101 and the first paragraph of § 112 unless one skilled in the art has…
  290. PTAB · Dec. 27, 1994Ex parte Lemoine , 94-0216 (December 27, 1994) [jurisdiction for appeal]When an applicant has had a claim for a patent rejected twice, even if the rejections issued in a parent application and its file wrapper continuation and the claims were reworded between them, the Board has jurisdiction under 35 U.S.C. §…

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