Challenges of patents in Inter Partes Reviews (IPRs) at
the Patent Trial and Appeal Board (PTAB) must be based on
anticipation or obviousness over printed prior art (35 U.S.C.
§ 311(b)). However, it is important that the petitioners
carefully choose the proper prior art to be relied on before filing
the petitions. This post discusses a decision of the PTAB to
deny institution of an IPR because the petition relied on
duplicative prior art. The case is Nu Mark LLC v. Fontem
Holdings 1, B.V. (Case IPR2016-01309; Decision Denying
Institution entered December 15, 2016) concerning Patent No.
8,863,752 B2 ("the '752 patent"). At the end of
this post, strategies to avoid the denial of IPR institution in a
similar situation or to deal with the denial will be
The '752 patent concerns electronic cigarettes. A
petition was filed to institute an IPR for some of the claims of
the '752 patent on the grounds that the challenged claims were
obvious over two prior art references, Brooks I (US 4,947,874) and
Whittemore (US 2,057,353). The claims were directed toward an
atomizer assembly for an electronic cigarette, and are summarized
below without reproduction of every claim element for brevity sake.
The claimed atomizer assembly for an electronic cigarette
a housing containing an atomizer in
contact with a liquid storage;
a screw thread electrode on one end of
a through-hole centered on the screw
thread electrode; and
a flow passageway from the atomizer to
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal and design patent damages.
Chanel, a billion-dollar fashion company that produces and sells luxury consumer products, identifies its products by the "Chanel" trademark and the "CC Monogram" trademark, which consists of two interlocking...
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