IN RE GARRIDO (Fed. Cir. 2016) (NP) – Newly added claims during reexamination may be rejected for failing to comply with § 112

by Steve Driskill | Apr 26, 2016 | [sub] reexamination, PTO Procedure

While rejections of original patent claims are limited to prior art grounds during reexamination, newly added claims may be rejected for failing to comply with § 112. Here, for example, the rejection of certain claims as being indefinite under 35 U.S.C. § 112, second...

NIKE, INC. v. ADIDAS AG (Fed. Cir. 2016) (P) – No heightened standard to establish patentability of IPR substitute claims over prior art not of record

by Steve Driskill | Feb 11, 2016 | [sub] inter partes review, PTO Procedure

Absent an allegation of conduct violating the duty of candor, there is no heightened standard to establish patentability of substitute claims in an inter partes review over “prior art not of record but known to the patent owner.” Here, for example, the patentee’s mere...

CONVOLVE, INC. v. COMPAQ COMPUTER CORP. (Fed. Cir. 2016) (P) – Closing the gap between PTO and court claim construction standards does not substantially alter claim scope

by Steve Driskill | Feb 10, 2016 | [sub] reexamination, PTO Procedure

Amendments bridging the gap between the PTO’s broadest reasonable interpretation standard and the court’s narrower Phillips claim construction standard do not represent a substantial alteration of claim scope. Here, for example, amendments during reexamination...

SYNOPSYS, INC. v. MENTOR GRAPHICS CORPORATION (Fed. Cir. 2016) (P) – A final IPR decision need not address claims raised in the original petition but denied review

by Steve Driskill | Feb 10, 2016 | [sub] inter partes review, PTO Procedure

A final decision in inter partes review (IPR) need not address claims raised in the original petition but denied review. Here, for example, the Board’s final decision was found to be proper even though it addressed only the claims as to which review was granted and...

PFIZER INC. v. LEE (Fed. Cir. 2016) (P) – Even substantive defects in notices such as restriction requirements may not toll the PTA clock

by Steve Driskill | Jan 22, 2016 | [sub] patent term adjustment, PTO Procedure

Even substantive defects in notices such as restriction requirements may not toll the clock for patent term adjustment purposes. Here, for example, no A Delay was found to be due for the time period between an initial and subsequently withdrawn restriction requirement...

ETHICON ENDO-SURGERY, INC. v. COVIDIEN LP (Fed. Cir. 2016) (P) – The same Board panel can make the decision to institute inter partes review and the final determination

by Steve Driskill | Jan 13, 2016 | [sub] inter partes review, PTO Procedure

Neither the AIA statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination. Background / Facts: The patent on appeal here from inter partes review proceedings at the...