Patent owners in IPR proceedings should be mindful that filing a response may subject the patent owner to an affirmative burden and obligate them to follow applicable PTO rules and regulations lest it fails to carry that burden.
When arguing secondary considerations in support of nonobviousness, it may be best to provide evidence of one or more secondary indicia of nonobviousness based on a combination of claimed features, since evidence predicated on a single claimed feature may be easier to rebut
VLSI argued that the Supreme Court’s 1991 decision in Astoria Federal sav. & Loan Ass’n v. Solimino applies only when an agency decision precludes a later court decision and, therefore, common-law claim preclusion would apply to the IPR proceeding
Federal Circuit affirmed a Patent Trial Appeal Board decision that there was insufficient written description in the asserted priority applications to support a genus claim because of a lack of ipsis verbis disclosure and insufficient blaze marks.
Federal Circuit, in a per curiam opinion, upheld the Patent Trial & Appeal Board’s finding that a challenged design patent was not obvious over the pre-KSR design patent obviousness test or anticipated. LKQ Corporation v. GM Global Technology Operations.