December 2019

Fox Factory, Inc. v. SRAM, LLC, Appeal Nos. 2018-2024, -2025 (Fed. Cir. December 18, 2019)

SRAM owned two patents pertaining to bicycle chainrings, which are toothed disks that engage bicycle chains. Fox filed inter partes reviews (IPR) against the patents. The Patent Trial and Appeal Board (PTAB) determined that Fox had shown that the SRAM claims were prima facie obvious over the prior art, but secondary consideration existed that allowed SRAM to overcome the obviousness attack. The secondary considerations asserted by SRAM in defense of the patents were commercial success of a product, licensing, copying, praise by others and long-felt but unmet need.


Continue Reading The PTAB’s Erroneous Presumption

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.


Continue Reading The American Rule Is Still the Rule