Larkin Hoffman IP Appellate Team Wins Two More Major Reversals


For the second time in as many months, Larkin Hoffman’s intellectual property appellate team successfully convinced the Patent Trial & Appeal Board (PTAB) to reverse the US Patent and Trademark Office (USPTO) in Ex Parte Reexamination proceedings filed by accused infringers against its clients’ patents. The USPTO had rejected the patent owners’ claims as "obvious" over a combination of several "prior art" patents. Overcoming obviousness rejections by the USPTO during prosecution of a patent application or during an Ex Parte Reexamination or during an Inter Partes Review can be a major challenge for patent owners.

In both appeals,  Larkin Hoffman’s IP appellate team, argued that the USPTO examiner failed to provide a sufficient rationale to support the proposed combinations of the prior art and engaged in improper hindsight to arrive at its obviousness conclusions.  In the latest PTAB decision reversing the USPTO, the PTAB held "we are persuaded by the Patent Owner that the Examiner's alleged rationales for combining the prior art are conclusory and lack rational underpinning to support the legal conclusion of obviousness." The two PTAB decisions can be found here.  Ex Parte Genesis Attachments Appeal No. 2018-007445”; Ex Parte Richard Gramm Appeal No. 2018-006732”.

These two significant PTAB victories come on the heels of Larkin Hoffman’s IP appellate team obtaining an order from the U.S. Supreme Court vacating and remanding a Federal Circuit decision involving an Inter Partes Review. The Court’s decision can be found here

“The firm’s trial and appellate practices have really thrived in the past decade,” said Paul Smith, Larkin Hoffman’s president and past chair of the litigation practice. “Our litigators have produced an impressive string of courtroom victories in intellectual property, real estate, employment, franchise and commercial matters, to name a few. We are thrilled to have become a go-to firm for complex litigation challenges.”

Any questions concerning any of these appellate victories can be directed to David Swenson, John Cotter or Thomas Oppold.