Tech Center 1700 PTAB Observations, October 2019

As due diligence for an appeal in a difficult case I have been prosecuting for a client, I looked through the decisions issued by PTAB out of Tech Center 1700 in October of 2019.  Here are some things I found interesting: The Board heard 80 appeals, and reversed the Examiner 24 times. In the reversals: […]

Things go from bad to worse for L’Oreal in their multifaceted litigation with Olaplex

In 2018, the Federal Circuit reversed the District Court of Delaware’s refusal to grant Liqwd a preliminary injunction against L’Oreal Liqwd v L’Oreal Preliminary Injunction.  Many reported earlier this summer on L’Oreal’s expensive loss to Olaplex in the District Court of Delaware.  (See, e.g., https://www.bloomberg.com/news/articles/2019-08-12/l-oreal-owes-startup-91-million-for-stealing-its-trade-secrets).  L’Oreal has now been dealt another blow by the Federal […]

Federal Circuit reverses PTAB’s holding that the preamble “travel trailer” was nothing more than an intended use, and not limiting

David Fought and Martin Clanton (“Appellants”, In re Fought and Clanton) are the named inventors on US Patent Application No. 13/507528 directed to a “travel trailer.”  The Examiner rejected the claim 1 under 35 USC 102(b) over a reference describing a conventional truck trailer and claim 2 under 35 USC 102(b) over a reference describing […]

Federal Circuit holds that transitional phrase “consisting essentially of” renders claim indefinite, unless the “basic and novel properties” of the invention are definite

HZNP Medicines LLC, Horizon Pharma USA Inc., v. Actavis Laboratories UT, Inc., HZNP v Horizon Pharma Appeal No. 2017-2149 et al, decided October 10, 2019 was an appeal from the District Court of New Jersey’s judgment of invalidity and noninfringement.  Amongst others, at issue was the District Court’s construction of the transitional phrase “consisting essentially […]

PTAB Designates Two Decisions Illustrating Bounds of Obviousness Rejections based upon “Design Choice”

On October 15, 2019, the PTAB designated as informative two decisions illustrating the bounds of use of “design choice” by Examiners in support of an obviousness rejection. In Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) Ex-parte-Spangler, Appellants’ claimed invention related to a featherseal incorporating two longitudinal tabs that engage with a post on […]

You had me (but apparently not the Federal Circuit) at “propshaft” – Federal Circuit invalidates patent directed to driveshaft technology

In American Axle Manufacturing Inc. v. Neapco Holdings LLC, case number 18-1763, AAM v Neapco the US Court of Appeals for the Federal Circuit affirmed a grant of summary judgement from the District of Delaware finding American Axle Manufacturing’s (AAM’s) method ineligible for patent protection under 35 USC §101. AAM sued Neapco for patent infringement […]

Federal Circuit tells PTAB to stay in their lane on certificate of correction issue

Honeywell International Inc. (“Honeywell”) owns US Patent No. 9,157,017 (the ‘017 patent) directed to fluoroalkene compounds used in refrigeration systems.  The ‘017 patent recites a chain of priority dating back to 2002.  During prosecution of the ‘017 patent, Honeywell filed a preliminary amendment in which all 20 original claims were replaced with 20 claims directed […]

PTO Releases New Subject Matter Eligibility Guidance

The release Update with Appendix Oct 2019 includes guidance on determining whether a claim recites one or more abstract idea(s) and if so, if the abstract idea(s) is/are limited to practical applications of the idea, additional examples in the life sciences and data processing categories and a table of cases from the Supreme Court and […]

Prosecution history estoppel does not apply if arguments were “made in a different context”

In MTD Products, Inc. v. Andrei Iancu (MTD), MTD appealed to the Federal Circuit from an IPR decision holding all claims unpatentable of US 8,011,458.  The claims at issue concerned a zero-turn radius vehicle, typically a mower.  The claim term “mechanical control assembly” was at issue and in particular, whether or not the claim term […]

Tug Toy Survives §101 Challenge on Motion to Dismiss

FYF-JB, LLC sued Pet Factory for allegedly infringing its tug-toy patent.  Pet Factory responded with a motion to dismiss, arguing that the asserted claims are not patent eligible, and further, noncompliant with 35 USC §112.  FYF-JB v Pet Factory In particular, FYF-JB’s tug-toy patent (US 9,681,643) describes that a need existed in the art for […]