In an unprecedented PTAB decision involving Spectrum Solutions LLC (“Spectrum”) (Petitioner) and Longhorn Vaccines & Diagnostics (“Longhorn”) (Patent Owner), the Board found all five challenged patents invalid and imposed sanction against patent owner Longhorn for failure to meet the duty of candor and fair dealing. The board determined that Longhorn selectively disclosed testing results to support its claim construction and misled its technical expert with incomplete laboratory data, thereby failed to meet its duty of candor and fair dealing in its actions before the Board. The claims and substitute claims in all five patents asserted by Longhorn were unpatentable due to its sanctionable misconduct. Longhorn was also ordered to provide Spectrum compensatory expenses including attorney fees. On one hand, it is a reminder that duty of candor is a continuing obligation that cannot be ignored even during the IPR proceeding. On the other hand, it does raise the question whether the PTAB has the authority to invalidate a patent for misconduct.
Recent Federal Circuit Decision Highlights Importance of Analogous Prior Art Doctrine
By William C. Rose on
The Court of Appeals for the Federal Circuit recently addressed the issue of “analogous prior art,” a patent law doctrine fundamental to the legal determination of whether a patent is invalid as obvious over the prior art. The decision illustrates the importance of carefully considering whether asserted prior art is analogous to the challenged patent, as the use of non-analogous art can result in dismissal of any obviousness argument based on that art.
USPTO Updates to Interim Director Review of PTAB Decisions
By James Anderson & Tamaria Dewdney on
On July 24, 2023, the United States Patent and Trademark Office (USPTO) announced updated procedures for the interim Director Review (DR) of Patent Trial and Appeal Board (PTAB) decisions. The updated procedures could help patent practitioners manage costs by providing a new mechanism for recourse following PTAB decisions.