Assignor Estoppel is Not Available in Inter Partes Review And No Distinction between Person having Ordinary Skill in US and Canada
In Redline Detection, LLC v. Star Envirotech, Inc., (IPR2013-00106, Paper 66, June 30, 2014) the Patent Trial and Appeal Board (“the PTAB”) held that the Petitioner, Redline Detection, failed to show by a preponderance of evidence that claims 9 and 10 of Star Envirotech’s patent no. 6,526,808 are unpatentable.
Claim Terms in an IPR Are Construed in a Broad But Reasonable Manner and Patent Owner Must Show Nexus Between Secondary Considerations of Non-Obviousness and Claimed Invention
Nuvasive, Inc. v. Warsaw Orthopedic, Inc. (IPR2013-00206, Paper No. 65, July 10, 2014)
In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB) found that only some of the grounds of unpatentability were sufficient to meet the “preponderance of the evidence standard” for determining claims unpatentable. In its decision, the PTAB held that secondary considerations, without any nexus between the evidence of the secondary considerations and the claimed invention, were not enough to save claims 17-23 of U.S. Patent No. 8,251,997 B2 (“the ‘997 patent”) from being unpatentable. However, Claims 9-16 and 24-30 were determined to be patentable. Id. at 27.
On July 10, 2014, in Virtualagility v. Salesforce.com Inc. et al., 2014-1232, a divided panel of the Court of Appeals for the Federal Circuit reversed the Eastern District of Texas’ denial of a motion to stay the district court case during a transitional Covered Business Method (CBM) Review.