James M. Oehler
Subscribe to James M. Oehler's PostsJames M. Oehler focuses his practice on patent prosecution and litigation. He has handled a wide range of patent applications related to medical devices, selective catalyst reduction systems, fiber optic coupling systems, automotive transmissions and accessories, paper products, heat exchanger systems, and commercial restaurant equipment. James has experience litigating in federal district courts, inter partes review proceedings before the US Patent Trial and Appeal Board of the US Patent and Trademark Office, and the International Trade Commission. He regularly advises clients across diverse technologies, including health care, e-commerce, consumer products, and energy industries. Read James Oehler's full bio.
What’s Shakin’ Bacon? Not Inventorship—Contribution to Invention Can’t Be “Insignificant”
By James M. Oehler on May 11, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court decision and found that an asserted inventor not named in the application was not a joint inventor because in the context of the entire invention his contribution was too insignificant to constitute joint inventorship. HIP, Inc. v. Hormel Foods Corp., Case No....
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Console Yourself: Patent Owner Bears IPR Estoppel Burden
By James M. Oehler on Apr 13, 2023
Posted In Patents
Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that a patent owner bears the burden of proving that an IPR petitioner is estopped from using invalidity grounds...
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No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel
By James M. Oehler on Dec 8, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR). In re Tyler, Reexam. No. 90/014,950 (PTO Nov. 15, 2022). In 2017, GITS Manufacturing filed two IPR petitions against...
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Only under Rare Circumstances Can the Patent Trial & Appeal Board Find Proposed Substitute Claims Unpatentable on Its Own
By James M. Oehler on Mar 31, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit addressed, for the first time, the issue of when the Patent Trial & Appeal Board (Board) may raise a ground of unpatentability that was not advanced by a petitioner in relation to proposed substitute claims. The Court upheld the standard defining the “rare circumstances” in which...
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Lights Out for Light-Up Shoe Patent, Thanks to Non-Limiting Preamble
By James M. Oehler on Jul 9, 2020
Posted In Patents
Finding that a patent’s preamble was not limiting and the patent owner’s secondary considerations of non-obviousness were weak, the US Court of Appeals for the Federal Circuit upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). Shoes By Firebug LLC v. Stride Rite Children’s Grp., LLC, Case Nos. 19-1622, -1623 (Fed....
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Claimed Process Not Anticipated by Third-Party’s Prior Secret Use
By James M. Oehler on Apr 23, 2020
Posted In Patents
Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or used by others,” “on-sale” and “public-use” bars of 35 U.S.C. § 102. BASF Corp. v. SNF Holding Co. et...
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