May 9, 2016Blog

This Week at the Board - May 9, 2016

PTAB Finds Claims to an Automatic Cigarette Tube Injector Obvious

In IPR2015-00072, the PTAB found the claims to an automatic cigarette tube injector obvious. The PTAB rejected patent owner’s argument that one of the prior art references was inoperable. The PTAB concluded that the reference disclosed explicit teachings about the operability of its apparatus. The PTAB also rejected patent owner’s challenge to the admissibility of the evidence. The PTAB noted that patent owner had waived its admissibility arguments because it did not submit timely objections. In addition, the PTAB concluded that the untimely objections were meritless because the evidence offered by petitioner established the public availability of the reference in question.

A link to the PTAB’s decision is provided here.

PTAB Grants Rare Motion to Amend

In IPR2015-00208, the PTAB granted a patent owner’s Motion to Amend after finding the challenged claims unpatentable over the prior art. Motions to Amend are rarely granted by the Board; nearly 95% of Motions to Amend are denied by the Board. In fact, as noted by the Assistant to the Solicitor General when representing the USPTO before the Supreme Court in Oral Arguments In re Cuozzo, this case marks the only sixth time a Motion to Amend has been granted. To obtain this favorable judgment, the patent owner made significant, substantive amendments in order to narrow the scope of the claims and thereby clearly define the claimed invention over the prior art. This is a stark reminder of the patent owner’s responsibility to demonstrate, by a preponderance of evidence, that amended claims are patentable over the prior art of record in order to persuade the PTAB to grant a Motion to Amend.

A link to the PTAB’s decision is provided here.


In the Arena: Oral Arguments Before the PTAB 2016 Post-Grant Webinar Series June 7, 2016

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