PTAB Tech Center 1700 Observations, November 2019

Examiner’s in Tech Center 1700 had a reversal rate of about 40% in November, giving patent prosecutors and applicants alike something to be grateful for: The Board heard 86 appeals, and reversed the Examiner 34 times: Oral hearing was held 11 times.  In 8 instances, the Examiner was affirmed and in 3, the Examiner was […]

PTAB reverses Examiner on “overlapping ranges” rejection

Ex parte Sobota, decided November 27, 2019.  Ex parte Sobota PTAB Decision  Claim 11 of US Patent Application No. 14/907,957, the subject of this appeal, recites: 11.  A process for preparing trichlorosilane (TCS), comprising reacting metallurgical silicon (mg-Si) having a titanium content of 0.08 wt% to 0.12 wt.%, and a phosphorus content ≥ 30 ppmw […]

A cautionary tale for use of “the present invention” – Techtronic Industries, LTD v. ITC

My first thought when reading this case was doesn’t anyone else have a garage door that will not close even when there is nothing in the way?  Or that goes on psychotic ‘opening and closing’ benders for no apparent reason?  I can’t be the only one – clearly improved garage door openers are needed in […]

Come as you are – so long as you aren’t wearing a t-shirt that infringes my logo

Nirana’s lawsuit for copyright and trademark infringement against Marc Jacobs International LLC (and others) has been allowed to continue.  On November 8, 2019, a Federal Judge denied defendant’s motion to dismiss the claims, regarding Nirvana’s “smiley face” logo, created by Kurt Cobain in 1991.  Nirvana v Marc Jacobs The Court conducted a review of defendant’s […]

Parties seek redress under Arthrex, despite “waiver”

In Sanofi-Aventis Deutschland GMBH, V. Mylan Pharmaceuticals Inc. Appeal Nos 2019-1368 and 2019-1369, decided November 19, 2019 Sanofi-Aventis v Mylan, a majority of the Federal Circuit rejected Sanofi’s request to vacate the Board’s decision and remand to a different Board panel under Arthrex, in a footnote.  Slip opinion, footnote 4.   Arthrex, Inc. v. Smith […]

Federal Circuit holds claims for infringement under the doctrine of equivalents barred by prosecution history estoppel

Pharma Tech Solutions, Inc., Decision IT Corp., v. LifeScan, Inc., LifeScan Scotland, LTD., Johnson and Johnson, Appeal 2019-1163, decided November 22, 2019. pharma-tech-solutions-v-lifescan Procedural Background Pharma Tech Solutions, Inc. sued LifeScan, Inc. for infringement of US Patent Nos. 6,153,069 and 6,413,411, both directed to blood glucose monitoring systems. As originally presented, the claims of the […]

A unanimous SCOTUS holds that the “PTO cannot recover the salaries of its legal personnel under §145”

Peter v. NantKwest