Category Archives: PTAB

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

Author: Yoonhee Kim
Editor:  Jeff T. Watson

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision that patentee PST failed to antedate a reference because reasonable diligence towards reduction to practice was not shown. Continue reading

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A Broader View of Analogous Prior Art

Author: Jonathan J. Fagan
Editor: Lauren J. Dreyer

In Unwired Planet, LLC v. Google Inc., Nos. 2015-1810 & 1811 (Fed. Cir. Nov. 15, 2016), the Federal Circuit affirmed the PTAB’s holding that the patent was invalid as obviousness, agreeing that a cited prior art reference was analogous prior art. The patented method claimed “farther-over-nearer” search result prioritization. When a mobile device user searched for a service, the claimed device would display nearby service providers but would prioritize paying providers. The Court considered whether a primary reference—Brohoff—in view of a second reference—Galitz—rendered the claim obvious. Brohoff taught a wireless network returning location-based results of service providers, while Galitz discussed methods of displaying and organizing results, such as alphabetization. Continue reading

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Federal Circuit Clarifies Nexus Requirement of Objective Indicia of Nonobviousness

Author: Saba N. Daneshvar
Editor: Aaron Gleaton Clay

In ClassCo, Inc. v. Apple, Inc., No. 15-1853 (Fed. Cir. Sept. 22, 2016), the Federal Circuit affirmed the Board’s finding that certain claims of ClassCo’s patent directed to improvements on “Caller ID” services were unpatentable under 35 U.S.C. § 103. During an inter partes reexamination of ClassCo’s patent, ClassCo presented the Board with evidence of objective indicia of nonobviousness, including industry praise and commercial success, but the Board afforded the evidence no weight, concluding that each had no nexus to the claimed invention because the evidence related to features disclosed in the prior art. While the Federal Circuit affirmed the Board’s ultimate obviousness determination, the Court held that the Board improperly dismissed ClassCo’s nonobviousness evidence.

The Federal Circuit clarified that “[e]ven though it was not dispositive evidence of nonobviousness, the Board should have given some weight and consideration to ClassCo’s evidence . . . . As we have explained, when secondary considerations are present, though they are not always dispositive, it is error not to consider them.” The Court further explained that under In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011), for “objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” The Court clarified that a nexus between the claimed invention and nonobviousness evidence exists where the evidence presented is reasonably commensurate with the scope of the claims, not where the merits of the claimed invention were readily available in the prior art.

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