The USPTO has taken definitive action following the Federal Circuit's decision in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc. Acting Director Coke Morgan Stewart announced the enforcement of 37 C.F.R. § 42.104(b)(4), which requires IPR petitions to clearly specify where each claim element is found in the prior art. This regulation prohibits the use of applicant-admitted prior art, expert testimony, and general knowledge to address missing claim limitations in IPR challenges, closing off potential avenues for petitioners in these proceedings.
The USPTO swiftly responded to the Federal Circuit's Shockwave decision by enforcing the requirement of 37 C.F.R. § 42.104(b)(4) regarding IPR petitions.
Acting Director Coke Morgan Stewart announced that the agency would no longer waive the requirement for IPR petitions to specify claim elements in prior art.
The enforcement of this regulation effectively prohibits the use of applicant-admitted prior art, expert testimony, and common sense to fill claim gaps.
The USPTO's memorandum clarifies that petitioners cannot use forms of 'general knowledge' to support their challenges in IPR proceedings.
Collection
[
|
...
]