Search Results for: Seema Mehta


Mar 2020

Claims may not be Cancelled for Indefiniteness in Inter Partes Review (IPR), but the Issue of Indefiniteness Will Continue to Arise

By Seema Mehta 繁體中文 In Samsung Elec. Am., Inc. v. Prisua Eng’g Corp.,[1] the CAFC held that the Patent Trial and Appeals Board (PTAB) may not cancel claims in Inter Partes Review (“IPR”) on the basis of indefiniteness under 35 § USC 112.  At first glance this seems exactly the right answer:  Section 311(b) of the statute limits the grounds on which a petitioner can request an IPR…

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Mar 2018

Plaintiff’s failure to reevaluate case post Alice results in fee award to opposing side

By: Seema Mehta Patent-owner Inventor Holdings, LLC, sued American retailer Bed Bath & Beyond (BBB) for infringement of US Pat. No. 6,381,582, directed to a method of purchasing goods at a local point-of-sale system from a remote seller.  The suit was filed in April 2014, a mere two months before the U.S. Supreme Court issued its decision in Alice Corp. v. CLS Bank International in…

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Feb 2018

Teaching Away and Motivation to Combine

By: Seema Mehta Late last year, the Federal Circuit issued an opinion in ARCTIC CAT INC., Plaintiff–Appellee v. BOMBARDIER RECREATIONAL (“BRP”), providing a noteworthy discussion of requirements to show motivation and teaching away in the 103 context.  U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545 (“’545 patent”) owned by Arctic Cat Inc. relate to a thrust steering system for personal watercrafts propelled by jet stream….

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May 2017

Functional Claim Language: The Indefiniteness Trap

By: Seema Mehta and Jonathan Osha Functional claim limitations define an element of an invention in terms of what it does rather than in terms of its structure.  In the United States, 35 U.S.C. §112(f) (pre-A.I.A. 35 U.S.C. §112, 6th paragraph) provides that “means-plus-function” and “step-plus-function” limitations are interpreted to cover the structure or acts disclosed in the specification to perform the recited functions, and…

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Apr 2017

Osha Liang Sponsors DCFemTech’s 3rd Annual Awards Celebration

See below for photos from the event. Osha Liang announced today that the firm is a proud sponsor of DCFemTech, the coalition of women leaders aimed at lowering the barriers to entry for women in tech by amplifying the efforts of women in tech organizations.  The annual event has recognized 48 women as recipients of their annual DCFemTech Awards. On May 18th, the organization and its…

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Mar 2017

More Ammunition Against an Examiner’s Improper Anticipation Rejection

By: Seema Mehta The U.S. Federal Circuit recently issued an opinion (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor) on a straight-forward anticipation issue, with some good quotes for use in prosecution practice.  In this case, appealed from a Patent Trials and Appeals Board (PTAB) decision in an Inter Partes review (IPR) proceeding, the Federal Circuit reversed the Board’s finding of anticipation of claim 21…

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Oct 2016

How Is The Newest USPTO Hybrid Pilot Program Any Different From The Other After-Final Options?

By: Seema Mehta and Robert Lord Introduction The Post-Prosecution Pilot (P3) Program is a recently announced pilot program at the USPTO that became effective on July 11, 2016, and was developed as part of the USPTO’s ongoing quality enhancement efforts during the period subsequent to final rejection and prior to the filing of a notice of appeal.   While the new program can most easily be described as…

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Jun 2015

Valeo North America Inc. Victorious at the PTAB

HOUSTON, June 2, 2015 /PRNewswire/ — In a significant victory, auto parts maker Valeo North America Inc. won a series of patent challenges related to vehicle vision and imaging sys-tem technology in the U.S. Patent and Trademark Office, the company’s law firm Osha Liang LLP said today. In a series of Final Written Decisions, the Patent Trial and Appeal Board invalidated 92 of 93 of…

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