PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.
Recent Blog Posts
- PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks. The court determined that substantial evidence did not support the Board’s finding that Linz is not a proper primary reference for a design patent obviousness challenge. The court determined that based on the Board’s description of the claimed designs, and the parties’... More
- Contour of Soup Can Saves Gravity Feed Display Design Patent Update: On September 26, 2019, the court vacated and remanded the PTAB’s decision. Next trip to the grocery store, stop in the canned soup aisle and take a closer look at how the canned soups are displayed on the shelves. You may notice a gravity feed dispenser with a label area. Between 2002 and 2009, Petitioner Campbell Soup Co. purchased $31 million of Patent Owner Gamon’s gravity feed display racks protected by design patent D621,645 (“the ‘645 patent”). Campbell touted Gamon’s... More
- Should I Stay or Should I Go? – Co-Pending IPR and Litigation Can Lead to Discovery Obligations Fighting a war on two fronts is rarely an enviable strategic position. While district court judges do not always grant stays of patent infringement cases until resolution of co-pending inter partes reviews (IPR’s), accused infringers considering whether to request a stay of litigation should note the PTAB’s February 28, 2018, Order in Becton, Dickinson and Company v. B. Braun Melsungen AG, IPR2017-01586, -01587, -01588, -01589, and -01590. The PTAB granted the patent owner’s motion to compel production of documents produced by... More
- It All Depends On How You Frame It Galaxia Electronics Co., Ltd. v. Revolution Display, LLC, PGR2016-00021, Galaxia sought post-grant review of Revolution’s U.S. Design Patent No. D736,750, entitled “Modular Video Support Frame Member.” The patented design was directed to a support frame for video monitors used in large-scale LED video image displays, such as those used on-stage at rock concerts, on the sides of buildings, or at amusement parks. Galaxia sought cancellation of the claimed design on grounds of non-joinder of proper inventors, and lack of ornamentality... More
- House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent On February 9, 2016, in C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01660, the PTAB refused to institute an IPR against US Patent No. 8,257,325, “Venous Access Port with Molded and/or Radiopaque Indicia.” The challenged claims were directed to a venous access port assembly with a marking to indicate the port is rated for power injection of a contrast fluid, which marking is visible by X-ray examination when the port is implanted. The Petitioner’s (Bard’s) primary reference was its own brochure,... More
- PTAB Provides Roadmap for Petitioning for IPR of Design Patents Less than one percent of petitions for inter partes review (“IPR”) involve design patents. This is not surprising, as over 9,000,000 United States utility patents have issued compared to only about 735,000 design patents. Several recent developments in design patent law, however, may narrow the gap as applicants look for less expensive ways to enhance their portfolios. For example, U.S. design patents filed on or after May 13, 2015 enjoy a 15-year term with no maintenance fees. And U.S. design... More