R&H’s Processes for Preparing Emulsion Polymers with Improved Opacity Not Invalid over the Prior Art that Does Not Include a “Swelling Agent” Narrowly Construed by the PTAB

ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY: October 11, 2017. Before Prost, Newman, and Taranto.   Takeaway: Where a patent specification uses the word ‘include’ immediately followed by the phrase ‘are those which,’ the element is properly limited to the embodiments “which exhibit the functional characteristics thereafter described.” Procedural …

Enablement from a Provisional Application Must Be Supported by the Disclosure and Not Require Undue Experimentation by a Person Having Ordinary Skill in the Art

STORER v. CLARK: June 21, 2017.  Before Prost, Newman, and Dyk.   Takeaway: In order for a non-provisional patent application to be enabled by the provisional patent application from which it takes priority, the disclosure in the provisional patent application must enable one having ordinary skill to produce the claimed …

Unsupported Declaration by an Interested Party is Insufficient to Remove § 102(e) Prior Art Reference

EMERACHEM HOLDINGS, LLC, v. VOLKSWAGEN GROUP OF AMERICA, INC.: No. 2016-1984; June 15, 2017.  Before Moore, Clevenger, and Chen. Takeaway: An uncorroborated declaration by an interested inventor may not be sufficient to show that a reference is not “by another” for the purposes of removing the reference as prior art …

The Federal Circuit Finds Standing to Appeal Reexamination Decisions Even Though the Reexamination Requestor Had Not Been Sued For Infringement At the Time the Reexaminations Were Filed and Decided, but Nonetheless Dismissed the Appeal as Moot Due to Patentee’s Covenant Not to Sue

PPG INDUS., INC. v. VALSPAR SOURCING, INC.: Feb. 9, 2017. Before Newman, Chen, and Stoll. Takeaways: A reexamination requestor has standing to appeal the PTAB’s reexamination decisions even though the requestor had not been sued for infringement at the time the reexaminations were initiated and decided, if the reexamination requestor …

Inequitable Conduct is Not Warranted Without Evidence of the Materiality of the Withheld Document

U.S. WATER SERVICES v. NOVOZYMES: Dec 15, 2016. Before Wallach, Hughes, and Stoll.                                                             Takeaway: Summary judgment of inherent anticipation is …