#ptab-decisions

#ptab-decisions

Renée's leadership extends well beyond operations. While I focus on external-facing initiatives such as content, programs, and strategic vision, she oversees the core business functions of the company, including finance and HR, and is instrumental in driving our growth.

The technology at issue is a subcutaneous cosmetic penile implant, a silicone sleeve placed between the skin and 'Buck's fascia' to enhance girth and length.

Congress set the patent term at twenty years from the earliest effective filing date. 35 U.S.C. § 154(a)(2) (not counting provisional or foreign national filing). But that statutory baseline is just the starting point. But, the actual term is shaped by a series of prosecution decisions, USPTO delays, terminal disclaimers, and patent family structure.

The case centers on the "Martin" reference, a patent application covering LED technology that was filed on April 16, 2003 and published on October 21, 2004. Martin was later abandoned and never became a patent. Lynk Labs' '400 patent claims a priority date of February 25, 2004, placing it squarely in the gap between Martin's filing and publication dates. Samsung successfully used Martin to challenge claims of the '400 patent as obvious in IPR.

Regents of the University of California ("Regents") and Broad Institute were engaged in a patent interference proceeding involving the adaptation of CRISPR systems to edit eukaryotic DNA. Both parties were engaged in extensive testing related to editing eukaryotic DNA during the time of the invention, and both filed multiple patent applications that became the subjects of the patent interference proceedings.

This week on IPWatchdog Unleashed, I speak with Todd Walters, who is Chair of the Patent Office Litigation practice group at Buchanan. We explore the current state of Patent Trial and Appeal Board (PTAB) practice and the growing tension among stakeholders as policy changes continue to reshape post-grant proceedings. We reflect on the intensity of opinion from patent owners and petitioners and discuss the high financial stakes and strategic importance of America Invents Act (AIA) proceedings.

Johnson and I discuss obviousness determinations built on excessive combinations of prior art, warning that such analyses blur the line between legitimate hindsight reconstruction and genuine innovation assessment. We also highlight a systemic blind spot: nuisance "ankle-biter" assertions that exploit litigation economics while largely evading PTAB scrutiny. These cases have driven much of the political backlash against patents while remaining functionally untouched by the post-grant review process.

The Office de-designated Proppant Express Invests., LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86 (PTAB Feb. 13, 2019); and Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (PTAB Feb. 14, 2019). According to a USPTO email sent Tuesday, both decisions conflict with the decision in Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential).

U.S. Patent No. 9,491,542 is titled "Automatic Sound Pass-Through Method and System for Earphones" and was challenged by Samsung via inter partes review (IPR) after ST1 sued Samsung for infringement. Samsung argued that claims 1-10 and 13- 20 of the patent were invalid due to obviousness based on three prior art references: Rosenberg, Ichimura and Visser. The PTAB ultimately found all of the challenged claims obvious over combinations of the prior art, but also found unchallenged claims 11 and 12 unpatentable without explanation.