January 5, 2017

Federal Circuit Court Decisions For Week Ending December 23, 2016

Rudolph Technologies, Inc. v. Camtek, Ltd., Case No. 2015-1418 (December 22, 2016) (Nonprecedential) Patent No. 7,729,528

Key point(s):

  • The PTAB must be mindful of hindsight bias and must be cautious of arguments reliant upon ex post reasoning.
  • New grounds of rejection by the PTAB are not considered final rejections and are not final for judicial review.

John D’Agostino v. MasterCard International Incorporated, Case Nos. 2016-1592, 2016-1593 (December 22, 2016) (Precedential) (3-0) Patent Nos. 7,840,486 and 8,036,988

Key point(s):

  • The PTAB should consult a patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.
  • If the evidence of record supports several reasonable but contradictory conclusions, the PTAB’s decision will not be found unsupported by substantial evidence simply because the PTAB chose one conclusion over another plausible alternative.

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