Maxwell Petersen, Thomas Dougherty Get Fed. Circ. Win

Chicago Partner Maxwell Petersen and Denver Partner Thomas Dougherty recently obtained a Federal Circuit ruling that the U.S. Patent Trial and Appeal Board is not prohibited from relying on a patent owner’s submissions when finding its claims unpatentable.

The owner of a patent for hot-work steel told the Federal Circuit that the PTAB erred in relying on the patent owner’s own submissions when determining that the claims would have been obvious, rather than limiting its analysis to the prior art presented by our client in the petition for inter partes review. The petitioner had argued that because the PTAB relied on the patent owner's submissions to define the level of ordinary skill in the art for claim construction, the PTAB was required to and did apply the same level of ordinary skill in the art when determining obviousness.

In reviewing the case, the Federal Circuit found that precedent should not be read more broadly to establish a rule prohibiting the PTAB from relying on a patent owner’s own submissions when determining unpatentability. The appellate court also rejected the patent owner’s arguments that it was denied adequate notice of and opportunity to address the possibility that the PTAB would rely on its submissions.

Petersen talked to Law360 about the ruling for an article titled “PTAB Can Invalidate Claims Using Owner Evidence: Fed. Circ.,” saying he was encouraged by the Federal Circuit’s decision but that “the case is far from over” in light of the appellate court’s remand. Read Petersen’s full quote here.

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