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Thomas Horstemeyer Secures Victory in Federal Circuit Decision Finding that the PTAB Misapplied the “Pertinent-Problem” Test for Analogous Art

  • November 11, 2020
  • Robert Gravois

In a victory secured by Thomas Horstemeyer for its client, Donner Technology, the Federal Circuit has ruled in a precedential decision that the PTAB erred in finding that a prior art reference did not constitute analogous art. As a result,…

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PTAB Institutes IPR Based on Art Previously Considered During Prosecution

  • January 23, 2018
  • Robert Gravois

The PTAB instituted IPR based on a reference that had been considered by the examiner during prosecution because the petition relied upon a previously unconsidered portion of the reference. Under 35 U.S.C. § 325(d), the PTAB has discretion to deny…

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IPR Petition Denied for Reliance on a Joint Declaration

  • December 12, 2017
  • Robert Gravois

A single declaration providing joint statements of two declarants was given little weight for presenting practical difficulties for cross-examination. In CSL Behring Gmbh v. Shire Viropharma Inc., IPR2017-01512 (PTAB Dec. 7, 2017) (Paper 12), the petitioner requested inter partes review (IPR)…

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PTAB Designates Three Decisions Regarding 35 U.S.C. § 325(d) as Informative Opinions

  • December 9, 2017
  • Robert Gravois

The Board has designated three decisions as "informative" to provide guidance to parties as to how it may deny IPR petitions that rely on prior art or arguments that have already been considered by the Patent Office. When determining whether…

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About the Author

Robert Gravois is a partner at Thomas | Horstemeyer LLP with extensive experience in patent office proceedings, including inter partes review (IPR), covered business method (CBM), reexamination, and interference proceedings. He has represented clients in proceedings at the Patent Trial and Appeal Board, in federal district courts throughout the country, and at the Court of Appeals for the Federal Circuit. Learn more.

About the Firm

Thomas | Horstemeyer LLP is a nationally recognized intellectual property law firm headquartered in Atlanta with approximately 40 attorneys and patent agents serving clients all over the world. The firm offers services in all areas in intellectual property, including patents, trademarks, trade secrets, and copyrights. All of Thomas | Horstemeyer’s attorneys and patent agents have technical backgrounds, with many holding advanced masters and doctorate degrees in their respective technical fields. Learn more.

Categories
  • 35 U.S.C. 315(b) (1)
  • 35 USC 315(e) (1)
  • 35 USC 325(d) (4)
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