Written By: John Kirkpatrick

Redline instituted an inter partes review (IPR) to show that claims 9 and 10 of U.S. Patent No. 6,526,808 (the ’808 patent), owned by Star, would have been obvious.  Redline did not include expert testimony to support its grounds in its IPR petition.  Upon institution of the IPR on two of the twelve grounds proposed in Redline’s petition, Redline submitted a motion for supplemental disclosure including expert testimony pursuant to 37 C.F.R. § 42.123(a), which allows for supplemental information “relevant to a claim for which the trial has been instituted” to be submitted “with-in one month of the date the trial is instituted.”  The USPTO PTAB denied Redline’s motion finding that the supplemental information could have been submitted with Redline’s petition and did not comply with the PTAB’s “statutory mandate for economy, integrity, efficient administration, and timely consideration of IPRs.”  Redline at *14.  The PTAB then rejected the grounds, noting that Redline “did not rely on an expert declaration in support of its position.” Id. at *12.  While Redline admitted that it intentionally delayed filing the expert information because submitting information for two grounds is less of a burden than submitting information for twelve grounds, Redline, on appeal, argued that the PTAB must allow the motion as long as the timeliness and relevance requirements of §42.123(a) are met.


Written By: Roland Casillas
              Web and Blog Editor

Patent No. U.S. 5,742,942 A

Golf Glove having Club-Gripping Strap

Inventors: Philip K. Sykes



Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 3,532,344 A

Golf club and glove including coacting non-slip elements and grip positioning means

Inventors: Benjamin Masstab


Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 2,258,999 A

Golf Player’s Glove

Inventors: Edward S Nunn

Written By: John Kirkpatrick

Wi-LAN sued Apple alleging infringement of U.S. Patent No. RE37,802 (the ’802 patent) concerning a wireless data communication technique.  The jury found no infringement and that the infringing claims were invalid as anticipated by prior art that disclosed a randomizer using real multipliers.  The district court denied Wi-LAN’s motion for judgment as a matter of law and for a new trial regarding infringement, but overruled the jury’s verdict regarding invalidity by ruling that the ’802 patent required complex multipliers.  Wi-LAN appealed the denial of JMOL and its motion for a new trial.  Apple appealed the district court’s ruling of validity.


Written By: David Youngkin

In Rosebud LMS Inc. V. Adobe Systems Incorporated the Federal Circuit affirmed the district court’s grant of summary judgement finding that Adobe Systems was not liable for pre-issuance damages because it had no actual notice of the application which issued as U.S. Patent No. 8,578,280.


Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 8,046,937 B2

Automatic Lacing System

Inventors: Tiffany A. Beers, Michael R. Friton, Tinker L. Hatfield

Assignee: Nike, Inc.

Written By: John Kirkpatrick

Appellant Ethicon asserts that the America Invents Act (AIA) and due process preclude the same panel of the Patent Trial and Appeals Board that instituted inter partes review of patented claims from making a final decision regarding the validity of the patented claims.  In addition, Ethicon argues that the disputed claims are valid because the commercial success of Appellee’s allegedly infringing invention is a “strong secondary indication of non-obviousness.”  Ethicon Endo-Surgery at *19.  The Court (DYK, Taranto) holds that “that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination” and finds no error in the Board’s obviousness determination.   Id. at *2-3.  The Dissent (Newman) argues that the AIA requires bifurcation of the process because the AIA requires the Director to make the institution decision and the Board to issue the final decision.

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