Sterne, Kessler, Goldstein & Fox P.L.L.C.

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1101 K Street NW
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Washington, DC 20005, United States
Phone: 202.371.2600
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  • Intellectual Property
  • Litigation
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100+ Attorneys

[Webinar] ITC Section 337 Year in Review - February 28th, 2:00 pm - 3:00 pm EST

Join Directors Daniel E. Yonan, Uma N. Everett, and Paul A. Ainsworth for the "ITC Section 337 Year in Review" webinar on Wednesday, February 28, 2024, at 2:00 p.m. EST. This webinar wraps up our 2023 series, Navigating the…more

Continuing Legal Education, Design Patent, Hyundai, Intellectual Property Litigation, Intellectual Property Protection

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PTAB Strategies and Insights - July 2021: Can the PTAB Adopt a New Construction of an Agreed-Upon Term?

In Qualcomm Inc. v. Intel Corp., the Federal Circuit ruled that the Patent Trial and Appeal Board violated patent owner Qualcomm’s rights under the Administrative Procedures Act (APA) by not giving it notice and a chance to…more

Administrative Procedure Act, Burden of Proof, Claim Construction, Intel, Inter Partes Review (IPR) Proceeding

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PTAB Strategies and Insights Newsletter - May 2023: Beware of Collateral Estoppel at the PTAB

When thinking about estoppel and the PTAB, the § 315(e) estoppels—relating to grounds a petitioner raised or reasonably could have raised—are likely the first to come to mind. However, other types of estoppel, such as collateral…more

§315(e), Appeals, Collateral Estoppel, Estoppel, Intellectual Property Litigation

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The Interface Between District Court Litigation and Contested Office Proceedings under the AIA: Motions to Stay

What is the standard for deciding a motion to stay in view of a contested office proceeding? Courts typically consider: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving…more

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2023 PTAB Year in Review: Analysis & Trends: The Changing Contours of IPR Estoppel Law

As any PTAB practitioner knows, the possibility of being estopped from asserting prior art in district court is a significant risk that must be considered when filing an IPR. Section 315(e)(2) prevents a petitioner, following a…more

Appeals, Estoppel, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Legislative Agendas

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MarkIt to Market® - June 2019: Blockchain-Based Names: New Frontier for Brands (and Squatters)

Blockchain technology has garnered attention from various sectors over the past ten years, much of it due to the rise of Bitcoin and other cryptocurrencies. Cryptocurrencies have gained popularity and notoriety for their…more

Authentication, Blockchain, Brand, Counterfeiting, Cryptocurrency

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2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews (“IPRs”)…more

America Invents Act, Estoppel, Ex Partes Reexamination, Patent Infringement, Patent Invalidity

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PTAB Strategies and Insights - August 2018: Petitioners Must Have Premonition to Win

Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing…more

Administrative Procedure Act, America Invents Act, Appeals, Evidence, Inter Partes Review (IPR) Proceeding

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PTAB Spotlight Series with Daniel Block

In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow…more

Ex Partes Reexamination, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board

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IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft…more

Bayh-Dole Act, Biden Administration, Comment Period, Disclosure Requirements, Drug Pricing

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2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed…more

§315(e), 35 U.S.C. § 285, America Invents Act, Attorney's Fees, Biologics

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Patent Prosecution Tool Kit: Patent Term Extension

Patent term extension (PTE) is available under the 1984 Drug Price Competition and Patent Restoration Act, also known as the Hatch-Waxman Act (The Act). The Act allows the extension of the term of a patent claiming a product…more

Administrative Procedure, Food Manufacturers, Hatch-Waxman, Medical Devices, Patent Prosecution

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Patent Marking Basics

After investing time and resources to obtain patent protection, consumer product companies should maximize their return through a well-executed patent marking plan. The details of an effective marking program must be considered…more

Constructive Notice, Consumer Product Companies, Damages, False Marking, Intellectual Property Protection

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PTAB Strategies and Insights - November 2018: The Growing Influence of Post-Grant Proceedings in Section 337 Investigations

Since the passage of the Leahy-Smith America Invents Act (AIA), post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) are interacting more with Section 337 investigations at the International Trade Commission…more

Administrative Proceedings, America Invents Act, Concurrent Litigation, International Trade Commission (ITC), Motion To Stay

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Global Patent Prosecution - November 2020: After Final Consideration Pilot Program 2.0 – Still Going Strong

Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. However, to advance the goal of compact prosecution, the USPTO introduced a program in 2012 that outlined when…more

Patent Applications, Patent Examinations, Patent Litigation, Patent Prosecution, Patents

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Global Patent Prosecution Newsletter - October 2020

The October 2020 issue of Sterne Kessler's Global Patent Prosecution newsletter discusses the factors you need to consider when filing strategies to protect your innovations in Asia and reviews the benefits for using the Patent…more

Asia, Filing Requirements, Foreign Patent Applications, Global Patent Prosecution, Innovation

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IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board…more

Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Claim Construction, Comment Period, Derivation Proceeding

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Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding Administrative Patent Litigation in China

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and…more

Administrative Hearings, Administrative Procedure, China, CNIPA, Design Patent

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Patent Prosecution Tool Kit: Summary of Subject Matter Eligibility: Biotech/Pharma Inventions

It has nearly been ten years since the Supreme Court’s landmark Mayo v. Prometheus (132 S.Ct. 1289 (2012)) decision, in which the Court established a two-prong test for determining patentable subject matter under 35 U.S.C. §…more

Biotechnology, Judicial Exception, Mayo v. Prometheus, Patent Prosecution, Patent-Eligible Subject Matter

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Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an…more

Administrative Procedure, America Invents Act, Declaration, Exceptions, Litigation Strategies

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2021 PTAB Year in Review: Analysis & Trends: IPR Estoppels: A Power Imbalance for Plaintiffs and Defendants

Inter partes review (IPR) proceedings raise complex estoppel issues that courts are grappling with and patent litigants must consider. Because patent challengers can assert invalidity in three different tribunals (the district…more

§315(e), Collateral Estoppel, Estoppel, Final Written Decisions, Inter Partes Review (IPR) Proceeding

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PTAB Strategies and Insights - July 2018: The Board Opines On Where The Line Is On Sanctionable Behavior During Deposition

Following up on our article on depositions the Board recently denied a motion for sanctions by the Patent Owner, which alleged that the Petitioner’s questioning during deposition exceeded the scope of the witness’s…more

Declaration, Depositions, Motion for Sanctions, Patent Ownership, Patent Trial and Appeal Board

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ITC Update: Takeaways from Certain Replacement Automotive Lamps

The Commission recently reversed the ALJ’s determination that the economic prong of the domestic industry requirement was satisfied and thereby found that there had been no section 337 violation in Certain Replacement Automotive…more

Administrative Law Judge (ALJ), Design Patent, Domestic Corporations, Intellectual Property Litigation, Intellectual Property Protection

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IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft…more

Bayh-Dole Act, Biden Administration, Comment Period, Disclosure Requirements, Drug Pricing

See all updates »

2023 PTAB Year in Review: Analysis & Trends: The Changing Contours of IPR Estoppel Law

As any PTAB practitioner knows, the possibility of being estopped from asserting prior art in district court is a significant risk that must be considered when filing an IPR. Section 315(e)(2) prevents a petitioner, following a…more

Appeals, Estoppel, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Legislative Agendas

See all updates »

MarkIt to Market® - March 2024: Piling Up Successes by Avoiding Descriptive Dangers

Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the ground…more

Descriptive Trademarks, Intellectual Property Litigation, Intellectual Property Protection, Precedential Opinion, Trademark Act

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PTAB Strategies and Insights - May 2020: Should USPTO Be Able to Make New Law Without Rulemaking

Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the…more

En Banc Review, Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding, Joinder

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2023 ITC Section 337 Year in Review: Analysis & Trends: Data and Trends: ITC Cases Instituted in 2023, Case Flow and Outcomes, and ITC Operations

In comparison to prior years, the ITC had a lower case load in 2023. This does not appear to have any relationship with the average time to resolution, but it could be contributing to the ITCs increased tendency to resolve…more

Design Patent, Intellectual Property Protection, International Trade Commission (ITC), Investigations, Ongoing Operations

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Patent Prosecution Tool Kit: Obviousness-Type Double Patenting

35 U.S.C. § 101 precludes a patentee from obtaining more than one patent on the same invention. Courts have extended this prohibition “to preclude a second patent on an invention which ‘would have been obvious from the subject…more

Administrative Procedure, Affirmative Defenses, Double Patent, Litigation Strategies, Obviousness-Type Double Patenting (ODP)

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2023 Design Patents Year in Review: Analysis & Trends

Not surprisingly, 2023 was another notable year for design rights around the globe. However, nowhere more than the U.S. did we see court decisions that will, in the case of one, and could in the case of another, have significant…more

America Invents Act, Appeals, CAFC, Design Patent, EU

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2021 PTAB Year in Review: Analysis & Trends: Developments in Antedating Asserted Art at the PTAB

USPTO Patent Trial and Appeal Board (PTAB) decisions in 2021 show that antedating a prior-art reference remains a viable option to knock out a ground in an inter partes review (IPR) petition—patent owners were successful in such…more

Evidence, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Inventors, Patent Applications

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Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to…more

America Invents Act, Disclosure Requirements, Ex Partes Reexamination, Intellectual Property Protection, Patent Examinations

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2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no…more

America Invents Act, Biologics, Biotechnology, Claim Construction, Ex Partes Reexamination

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The Supreme Court Nixes Claims to Isolated Genomic DNA

The U.S. Supreme Court decided today that claims to isolated genomic DNA are not patentable subject matter and thus invalid. This decision rendered invalid patent claims owned by Myriad Genetics as well as thousands of patent…more

AMP v Myriad, DNA, Gene Patenting, Human Genes, Myriad

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MarkIt to Market® - February 2024

Thank you for reading the February 2024 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the advertising rights of luxury resellers and important updates to the Warner Chappell Music v. Nealy…more

Brand, Copyright, Copyright Litigation, Copyright Ownership, Counterfeiting

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[Webinar] ITC Section 337 Year in Review - February 28th, 2:00 pm - 3:00 pm EST

Join Directors Daniel E. Yonan, Uma N. Everett, and Paul A. Ainsworth for the "ITC Section 337 Year in Review" webinar on Wednesday, February 28, 2024, at 2:00 p.m. EST. This webinar wraps up our 2023 series, Navigating the…more

Continuing Legal Education, Design Patent, Hyundai, Intellectual Property Litigation, Intellectual Property Protection

See all updates »

Critical Dates for Europe’s New Unified Patent and Unitary Patent Court Now Certain

Now is the time to act if you have European patents or a pending application. Europe’s new Unified Patent and Unitary Patent Court (UP/UPC), which have been in development for the better part of a decade, are finally on the…more

EU, Opt-Outs, Patent Infringement, Patent Ownership, Patents

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IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board…more

Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Claim Construction, Comment Period, Derivation Proceeding

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PTAB Strategies and Insights - September 2020: Snap Shot Summer 2020 - Recent Trends in Applying 315(e)/325(e) Estoppel

This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel.   We will show that the trend in the…more

§ 325(e), §315(e), Estoppel, Inter Partes Review (IPR) Proceeding, Litigation Strategies

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Global Patent Prosecution Newsletter - April 2019

Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first…more

Patent Prosecution, Patent-Eligible Subject Matter, Patents, Pending Legislation, USPTO

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2023 Design Patents Year in Review: Analysis & Trends: Global Design Law and Policy: Gains and Setbacks in Protecting Digital and Virtual Designs

The outlines of global design protection change regularly, with every year bringing significant updates in at least some major jurisdictions. In general the changes bend toward greater alignment and the emergence of…more

Australia, Brazil, Computer-System Design/Software Services, Corporate Counsel, Design Patent

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Patent Prosecution Tool Kit: Patenting the Product Label

When the U.S. Food and Drug Administration approves a new drug, it also approves a package insert of the drug, known as a “product label.” A pharmaceutical company marketing a generic product is required to package their product…more

Direct Infringement, Food and Drug Administration (FDA), Induced Infringement, Litigation Strategies, Patent Applications

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PTAB Strategies and Insights Newsletter - December 2022: Broad Motion To Amend Scope Available in AIA Proceedings So Long as Directed to Patentability

The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings. In American…more

Intellectual Property Litigation, Inter Partes Review (IPR) Proceeding, Patent Ownership, Patent Trial and Appeal Board, Patentability Search

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Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Comcast Corp. v. Int’l Trade Comm’n, 951 F.3d 1301 (Fed. Cir. 2020)

The International Trade Commission found a violation of Section 337 by Comcast X1 set-top boxes, and Comcast appealed two issues of statutory interpretation underlying the Commission’s finding. First, Comcast argued that its…more

Administrative Law Judge (ALJ), Comcast, International Trade Commission (ITC), Patent Infringement, Patent Litigation

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Patent Prosecution Tool Kit: Capturing After-Discovered Embodiments in Biotech Patents by Careful Prosecution

A Maddening Habit  - Biotechnology is an unpredictable science. When its practitioners wish to enforce their patents, they often run into a serious problem. Unlike chemists or pharmacologists, who for a century or so have…more

After-Discovered Embodiments (ADEs), Biotechnology, Means-Plus-Function, Patent Infringement, Patent Invalidity

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PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance of…more

Administrative Procedure, Due Process, Inter Partes Review (IPR) Proceeding, Litigation Strategies, Motion to Amend

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2023 ITC Section 337 Year in Review: Analysis & Trends: The Public Interest Impact – Considerations from AliveCor and Masimo

The year 2023 was marked by two landmark Commission determinations resulting in exclusion orders and cease and desist orders against a popular consumer wearable—the Apple Watch. both investigations focused on health monitoring…more

Administrative Law Judge (ALJ), Appeals, Apple, Comment Period, Food and Drug Administration (FDA)

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PTAB Strategies and Insights Newsletter - May 2023: Kyocera and the Brewing Debate Over Expert Qualifications at the PTAB

Technical experts play a key role in patent litigation, including in PTAB litigation. Indeed, experts are often the only witnesses to provide testimony in PTAB proceedings, and final written decisions often hinge on which…more

Corporate Counsel, Evidence, Expert Testimony, International Trade Commission (ITC), Inventions

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MarkIt to Market® - Wrestling with the Scope of Trademark Rights

2024 has started off strong for Dwayne "The Rock" Johnson, as he recently joined the board of TKO Ground, the company behind WWE and UFC, and acquired WWE’s trademark rights in his “THE ROCK” nickname…more

Advertising, Corporate Branding, Entertainment Industry, Goods or Services, Intellectual Property Protection

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Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to…more

America Invents Act, Disclosure Requirements, Ex Partes Reexamination, Intellectual Property Protection, Patent Examinations

See all updates »

2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews (“IPRs”)…more

America Invents Act, Estoppel, Ex Partes Reexamination, Patent Infringement, Patent Invalidity

See all updates »

2023 PTAB Year in Review: Analysis & Trends: The Staying Power of Fintiv: The Effect of Parallel Litigation at the PTAB in 2023

In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America…more

America Invents Act, Final Written Decisions, Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding

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2021 PTAB Year in Review: Analysis & Trends: Developments in Antedating Asserted Art at the PTAB

USPTO Patent Trial and Appeal Board (PTAB) decisions in 2021 show that antedating a prior-art reference remains a viable option to knock out a ground in an inter partes review (IPR) petition—patent owners were successful in such…more

Evidence, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Inventors, Patent Applications

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2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no…more

America Invents Act, Biologics, Biotechnology, Claim Construction, Ex Partes Reexamination

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[IP Hot Topics Podcast] Innovation Conversations: Dr. Wayne A.I. Frederick (transcript)

Our “Innovation Conversations” series continues with President of Howard University Dr. Wayne A.I. Frederick. Sterne Kessler Director Trey Powers and Director of Marketing and Communications Kathryn Holmes Johnson (HU Class of…more

Colleges, Coronavirus/COVID-19, Historically Black Colleges and Universities (HBCU), Innovation, Intellectual Property Protection

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Patent Prosecution Tool Kit: Update on Patent Subject Matter Eligibility & Abstract Ideas

Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S…more

Abstract Ideas, CLS Bank v Alice Corp, Computer-Related Inventions, Mayo v. Prometheus, Patent Prosecution

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PTAB Strategies and Insights Newsletter - December 2022: "LEAP to Chambers" Program: Associate Perspectives

On November 9, 2022, the USPTO’s Legal Experience and Advancement Program (LEAP) hosted "LEAP to Chambers," a new LEAP initiative to provide LEAP-eligible practitioners with an inside perspective on practicing before PTAB. …more

Administrative Patent Judges, LEAP, Oral Hearings, Patent Trial and Appeal Board, USPTO

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Global Patent Prosecution - July 2020: Obtaining and Enforcing Patents for Outer Space

The outer space industry is growing in scale and diversity. By 2040, the global outer space industry could generate revenue of more than $1 trillion. And outer space projects are increasingly becoming entirely commercial…more

Global Patent Prosecution, International Treaties, Outer Space, Patent Infringement, Patent Registration

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PTAB Strategies and Insights - September 2019: PTAB Further Clarifies DJ Action Time Bar and Statutory Disclaimers

The PTAB designated at least three more decisions as precedential. Of note, two of the cases rely on the Federal Circuit’s en banc decision in Click to Call, which is scheduled for argument at the Supreme Court on December 9,…more

§ 314(d), § 315(b), Appeals, Collateral Estoppel, Declaratory Judgments

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Patent Prosecution Tool Kit: Fast Track Patent Examination

Building a patent portfolio is an important part of new product development. For many startups, patents help credential their technology and attract investment. However, backlogs at the U.S. Patent and Trademark Office (USPTO)…more

America Invents Act, Intellectual Property Protection, Patent Portfolios, Patent Prosecution, Patent Prosecution Highway

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Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of Washington,…more

Administrative Procedure Act, Amgen v Sanofi, Appeals, Claim Construction, Copyright

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MarkIt to Market® - October 2023: A Great Trademark Portfolio Never Goes Out of “Style” – “Mastermind” Brand Protection Strategies from Taylor Swift

October seems to be the inescapable Taylor Swift’s unofficial month of choice – 17 years after she released her self-titled first album in October 2006, the October 2023 news cycle is buzzing about her “Taylor Swift: The Eras…more

Advertising, Brand, Business Strategies, Corporate Branding, Intellectual Property Protection

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2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at the PTAB

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike…more

Administrative Procedure Act, Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Appeals, Apple

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PTAB Spotlight Series with Lestin Kenton

In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow…more

Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding, International Trade Commission (ITC), Patent Litigation

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USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,…more

America Invents Act, Anticipation, Appeals, Claim Construction, Final Written Decisions

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Critical Dates for Europe’s New Unified Patent and Unitary Patent Court Now Certain

Now is the time to act if you have European patents or a pending application. Europe’s new Unified Patent and Unitary Patent Court (UP/UPC), which have been in development for the better part of a decade, are finally on the…more

EU, Opt-Outs, Patent Infringement, Patent Ownership, Patents

See all updates »

The Supreme Court Limits What Constitutes Proper Venue

In TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341, 581 U.S. __ (2017), the Supreme Court reversed a Federal Circuit decision and clarified the proper scope of venue pursuant to the patent venue statute, 28 U.S.C…more

Forum Selection, Patent Infringement, Patent Litigation, Patents, Personal Jurisdiction

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ITC Update: Takeaways from Certain Replacement Automotive Lamps

The Commission recently reversed the ALJ’s determination that the economic prong of the domestic industry requirement was satisfied and thereby found that there had been no section 337 violation in Certain Replacement Automotive…more

Administrative Law Judge (ALJ), Design Patent, Domestic Corporations, Intellectual Property Litigation, Intellectual Property Protection

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The Supreme Court Redefines Patent Exhaustion

In Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (U.S. May 30, 2017), the Supreme Court fundamentally changed patent licensing in the United States by eliminating a key limitation on patent exhaustion,…more

Exports, Foreign Sales, Imports, Impression Products v Lexmark International, IP License

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PTAB Strategies and Insights - May 2020: Supreme Court – Decided and Pending Constitutional Challenges

Most readers have been following the impact of the Federal Circuit’s decision in Arthrex and know that an earlier and less developed Arthrex I case is on cert to the Supreme Court asking the Court to address the appointments…more

Denial of Certiorari, Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding, Patent Litigation

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2021 PTAB Year in Review: Analysis & Trends: Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions

In June 2021, the US Patent and Trademark Office (USPTO) published an update to its study of America Invents Act (AIA) trials involving challenges to Orange Book-listed and biologic patents from September 16, 2012, through June…more

America Invents Act, Biologics, Biosimilars, Claim Construction, Final Written Decisions

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Patent Prosecution Tool Kit: Obviousness-Type Double Patenting

35 U.S.C. § 101 precludes a patentee from obtaining more than one patent on the same invention. Courts have extended this prohibition “to preclude a second patent on an invention which ‘would have been obvious from the subject…more

Administrative Procedure, Affirmative Defenses, Double Patent, Litigation Strategies, Obviousness-Type Double Patenting (ODP)

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2023 ITC Section 337 Year in Review: Analysis & Trends: Rule and Procedural Developments at the ITC in 2023

2023 was a calm year for the International Trade Commission (“ITC”) with no revisions to the USITC Rules & Procedures.1 And while the number of Section 337 complaints filed experienced a three-year low, administrative law judges…more

Administrative Law Judge (ALJ), Imports, International Trade Commission (ITC), Inventions, Inventors

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PTAB Strategies and Insights - January 2021: Petitioner's District Court Stipulation Results in PTAB Trial Institution Under the PTAB's Fintiv Analysis

In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its…more

Denial of Institution, Inter Partes Review (IPR) Proceeding, International Trade Commission (ITC), Judicial Discretion, Parallel Proceedings

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PTAB Strategies and Insights - November 2018: Timing is Everything for Discretionary Denial

A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial…more

America Invents Act, Concurrent Litigation, Dismissals, Final Written Decisions, Patent Litigation

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Introduction (Federal Circuit IP Appeals: Summaries of Key 2023 Decisions)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of Washington,…more

America Invents Act, Amgen v Sanofi, Oral Argument, Patent Trial and Appeal Board, Patents

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Selection Invention Found Unpatentable For Obviousness-Type Double Patenting

On August 21, 2014, the Federal Circuit issued a decision in AbbVie Inc. v. The Mathilda and Terence Kennedy Institute of Rheumatology Trust., holding that the claims to a selection invention were invalid based on…more

AbbVie, Double Patent, Inventions, Obviousness, Patent Litigation

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PTAB Strategies and Insights Newsletter - March 2022: Federal Circuit Rules on Two Means-Plus-Function/Indefinite Cases

The Federal Circuit issued two cases this week providing more clarity to when a functional claim feature should be considered a de facto means-plus-function claim that requires structural detail to meet the indefiniteness…more

Indefiniteness, Means-Plus-Function, Patent Applications, Patent Litigation, Patents

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Patent Prosecution Tool Kit: Fast Track Patent Examination

Building a patent portfolio is an important part of new product development. For many startups, patents help credential their technology and attract investment. However, backlogs at the U.S. Patent and Trademark Office (USPTO)…more

America Invents Act, Intellectual Property Protection, Patent Portfolios, Patent Prosecution, Patent Prosecution Highway

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IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft…more

Bayh-Dole Act, Biden Administration, Comment Period, Disclosure Requirements, Drug Pricing

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Patent Prosecution Tool Kit: Patent Term Extension

Patent term extension (PTE) is available under the 1984 Drug Price Competition and Patent Restoration Act, also known as the Hatch-Waxman Act (The Act). The Act allows the extension of the term of a patent claiming a product…more

Administrative Procedure, Food Manufacturers, Hatch-Waxman, Medical Devices, Patent Prosecution

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MarkIt to Market® - February 2024

Thank you for reading the February 2024 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the advertising rights of luxury resellers and important updates to the Warner Chappell Music v. Nealy…more

Brand, Copyright, Copyright Litigation, Copyright Ownership, Counterfeiting

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2019 PTAB Year in Review: Analysis & Trends: The PTAB’s Evolving Evidentiary Standards: Printed Publications at the Institution Phase

The PTAB’s evolving evidentiary standards often perplex petitioners and patent owners.  Historically, significant party effort has gone into attempting to establish that non-patent literature, such as articles, textbooks,…more

Burden of Proof, Evidentiary Standards, Patent Litigation, Patent Trial and Appeal Board, Patents

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Patent Prosecution Tool Kit: Medical Device Considerations

Preparing and prosecuting medical device patents can be unique and challenging. Patent owners and practitioners often must consider a wide range of converging technologies from the mechanical, electrical, chemical, and…more

Best Practices, Connected Items, Design Patent, Divided Infringement, Global Patent Prosecution

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MarkIt to Market® -The Emperor Has No…Agreement? The USPTO’s Recent Update on “Clothed” Consent Agreements

As any good trademark practitioner knows, a “naked” consent agreement is one in which one party provides consent to the registration of another party’s mark without an explanation of why confusion is unlikely, or what the…more

Consent Agreements, Goods or Services, IP Assignment Agreements, Likelihood of Confusion, Trademark Registration

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2021 PTAB Year in Review: Analysis & Trends: Fintiv Continues To Take Center Stage: The Effect of Parallel Litigation at the PTAB in 2021

In 2021, Fintiv continued to be one of the hottest and most controversial issues facing the patent bar. The USPTO Patent Trial and Appeal Board’s (PTAB) precedential Fintiv decision enumerated factors that the PTAB applies when…more

America Invents Act, Inter Partes Review (IPR) Proceeding, International Trade Commission (ITC), Parallel Proceedings, Patent Applications

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2021 PTAB Year in Review: Analysis & Trends: Is the Tide Turning on Chemical Patent Challenges at the PTAB?

The so-called “Lead Compound Analysis” is the primary legal framework for assessing chemical obviousness. Despite the USPTO Patent Trial and Appeal Board’s (PTAB) initial apparent reluctance to operate under this framework, the…more

America Invents Act, Chemical Compounds, Obviousness, Patent Litigation, Patent Trial and Appeal Board

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MarkIt to Market® - May 2022: Watching the Pot™

The NIH is Soliciting Research on How Cannabinoid Signaling Influences Cancer Biology - There is a recognized need for more research on how cannabis derivatives can be used for therapeutic purposes. As part of a growing…more

Cancer, Cannabis Products, Medical Research, National Institute of Health (NIH), Research Funding

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PTAB Strategies and Insights - November 2021: USPTO Lowers Hurdle for LEAP Participation

As we discussed in a previous newsletter, the Legal Experience and Advancement Program (LEAP) is a tremendous success for the PTAB, practitioners, and clients alike. In a little over 18 months, less experienced advocates—those…more

LEAP, Oral Argument, Patent Litigation, Patent Trial and Appeal Board, Patents

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Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of Washington,…more

Administrative Procedure Act, Amgen v Sanofi, Appeals, Claim Construction, Copyright

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Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Honeywell International Inc. v. Arkema Inc., 939 F.3d 1345 (Fed. Cir. 2019)

Honeywell owns U.S. Patent 9,157,017, which claims automotive air-conditioning systems. The application to the ’017 patent had originally described and recited claims for flouroalkane compounds for use in refrigeration systems…more

Abuse of Discretion, Appeals, Certificate of Correction, Claim Amendments, Director of the USPTO

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Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of Washington,…more

Administrative Procedure Act, Amgen v Sanofi, Appeals, Claim Construction, Copyright

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PTAB Strategies and Insights - November 2021: Are Institution Decisions Set in Stone?

The Leahy-Smith America Invents Act granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review.” 35 U.S.C § 316(a)(4). For the Patent Trial and Appeal Board (“Board”) to review…more

Administrative Procedure Act, America Invents Act, Appeals, Inter Partes Review (IPR) Proceeding, Notice and Comment

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PTAB Strategies and Insights - November 2020: Missing Analysis of "Problem Being Solved" Dooms PTAB Non-Analogous Art Findings and Court Orders a Redo on Remand

In its decision to remand, the Federal Circuit (1) held the Board’s non-analogous art test was wrong and articulated a new test for the Board to follow on remand, and (2) left it up to the Board to make the ultimate decision of…more

Appeals, Obviousness, Patent Litigation, Patent Trial and Appeal Board, Patents

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MarkIt to Market® - September 2023: How Design Patents Can Complement Brands' Trademark Portfolios

Many brand owners are familiar with the value of registered trademarks, which safeguard the goodwill cultivated between mark holders and consumers by reducing confusion as to the source of the associated goods. However, owners…more

Design Patent, Graphic Designs, Graphical User Interface, Intellectual Property Protection, IP Portfolio

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2023 PTAB Year in Review: Analysis & Trends: Standard Essential Patents at the PTAB: Are SEPs Faring any Differently than Non-SEPs? Impacts and Analysis

Standard-essential patents (SEPs) are on the rise. A key factor undergirding that rise is the desire for device connectivity in all things, and the fact that reliable and robust connectivity is impossible without using key…more

Department of Justice (DOJ), FRAND, Injunctive Relief, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding

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2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court…more

Broadest Reasonable Interpretation Standard, Claim Construction, Concurrent Litigation, Inter Partes Review (IPR) Proceeding, International Trade Commission (ITC)

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Arthrex SCOTUS Oral Arguments on Monday! We’ll Be Live Tweeting Updates

When oral arguments commence in United States v. Arthrex, Inc., No. 19-1434 (U.S.) on Monday, March 1, William H. Milliken, a director in Sterne Kessler’s Trial & Appellate Practice Group, will be live tweeting updates from the…more

5 U.S.C. § 7513(a), Administrative Patent Judges, Appointments Clause, Arthrex Inc v Smith & Nephew Inc, Constitutional Challenges

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Patent Prosecution Tool Kit: Medical Device Considerations

Preparing and prosecuting medical device patents can be unique and challenging. Patent owners and practitioners often must consider a wide range of converging technologies from the mechanical, electrical, chemical, and…more

Best Practices, Connected Items, Design Patent, Divided Infringement, Global Patent Prosecution

See all updates »

Patent Prosecution Tool Kit: Implications of the BPCIA on the IP Strategies of Brand Companies and Biosimilar Developers

The enactment of the Biologics Price Competition and Innovation Act (“BPCIA”) in 2010 established for the first time ever in the US an abbreviated pathway for obtaining FDA approval of a new biological product that is deemed…more

Biosimilars, BPCIA, Corporate Branding, FDA Approval, Hatch-Waxman

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MarkIt to Market® - August 2023: Happy to Wait! New Rules Allow for Suspension of Trademark Review Cases in China

As we previously reported, in January of this year, the China National Intellectual Property Administration (CNIPA) published its Draft 5th Amendment to the Chinese Trademark Law. See here. One of the proposed amendments no…more

Abandonment, Change of Ownership, China, CNIPA, Foreign Trademark

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Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese…more

America Invents Act, China, EU, European Patent Office, Grace Period

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MarkIt to Market® - July 2021: Bombing Atomically – Futura and the Future of Fluid Trademarks

This month, Google has celebrated July 4th, the start of the 2020 summer Olympics, and Ángela Peralta's 175th birthday, to name a few, through its iconic Google Doodles found atop the Google search page. Google is one of many…more

Artists, Brand, Fluid Trademarks, Intellectual Property Litigation, Intellectual Property Protection

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[Webinar] The Interplay Between District Court and PTAB: Estoppels, Evidentiary, Recovery - April 5th, 1:00 pm - 2:00 pm EDT

In conjunction with the release of the firm's year-in-review report, our speakers will discuss the recent cases surrounding IPR estoppels, evidentiary issues, and recovery, which notably highlight the interplay between the…more

Continuing Legal Education, Estoppel, Evidence, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding

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Patent Prosecution Tool Kit: Patent Term Adjustment

In 1999, Congress created a system of patent term adjustment (PTA) that adds additional time to patent terms to remedy certain delays caused by the U.S. Patent and Trademark Office (PTO) in issuing a patent…more

Administrative Procedure, Information Disclosure Statement, Litigation Strategies, Patent Prosecution, Patent Term Adjustment

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Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a Patent…more

Appeals, Intellectual Property Litigation, Intellectual Property Protection, Obviousness, Obviousness-Type Double Patenting (ODP)

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IP Hot Topic: Imperative Information on the New Unified Patent Court (UPC) Launching June 1

The new European Union Unified Patent Court (UPC) and Unitary Patent go live on June 1, 2023. Enterprises operating in Europe should understand the risks and rewards of this new system, one of the most significant developments…more

Enforcement, EU, European Patent Office, Intellectual Property Litigation, Intellectual Property Protection

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PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on whether…more

Appeals, Evidence, Expert Testimony, Inter Partes Review (IPR) Proceeding, Inventions

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MarkIt to Market® - March 2024: True Fans Keep It Real: Behind the IPR Center's Operation Team Player Public Awareness Campaign

While many brand owners are generally aware of and work with U.S. Customs and Border Protection (CBP) to record trademark and copyright registrations and help with seizures, fewer may understand the role of the National…more

Brand, Copyright Registration, Corporate Branding, Counterfeit Goods Regulation, Customs and Border Protection

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2021 PTAB Year in Review: Analysis & Trends: A Niche Within a Niche: The PTAB’s Evolving Motion to Amend Practice

On March 15, 2019, the United States Patent and Trademark Office (USPTO) introduced a new Motion to Amend (MTA) Pilot Program. The Pilot Program gave patent owners an option to (1) receive Preliminary Guidance on the merits of…more

America Invents Act, Motion to Amend, Patent Litigation, Patent Trial and Appeal Board, Patents

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Second Chances for Secondary Considerations - Hiding the "Novelty Ball"

Like Johnny Cash’s famous tune “A Boy Named Sue,” “secondary considerations” of non-obviousness suffer for their name. Courts have historically relegated this 4th Graham factor to a “secondary” status, considering objective…more

Burden-Shifting, Graham Factors, Nexus, Nonobvious, Novelty

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[Webinar] The Interplay Between District Court and PTAB: Estoppels, Evidentiary, Recovery - April 5th, 1:00 pm - 2:00 pm EDT

In conjunction with the release of the firm's year-in-review report, our speakers will discuss the recent cases surrounding IPR estoppels, evidentiary issues, and recovery, which notably highlight the interplay between the…more

Continuing Legal Education, Estoppel, Evidence, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding

See all updates »

2021 PTAB Year in Review: Analysis & Trends: Evidentiary Issues When Leveraging the Records in Parallel Proceedings Involving the PTAB

Parallel proceedings before the USPTO Patent Trial and Appeal Board (PTAB) are a common feature of district court litigation, and it is common for the factual records to overlap between these tribunals. As a result, questions…more

Claim Construction, Evidence, Inter Partes Review (IPR) Proceeding, Parallel Proceedings, Patent Litigation

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The Supreme Court Heightens Antitrust Scrutiny For ANDA Reverse Payment Agreements Between Pharmaceutical Companies

The U.S. Supreme Court yesterday ruled on the long-awaited FTC v. Actavis case concerning ANDA reverse payments, resolving a sharp circuit split. The Court held that settlement agreements that include reverse payments to end…more

Abbreviated New Drug Application (ANDA), Antitrust Litigation, Federal Trade Commission (FTC), FTC v Actavis, Patent Infringement

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2023 PTAB Year in Review: Analysis & Trends: Watch Your Step – Discretionary Denial Under 325(d) Is Alive and Kicking

The USPTO Director is under no obligation to institute petitions for inter partes review, even if a petition technically meets all of the requirements for institution. There are two well-known flavors of discretionary denial…more

Advanced Notice of Proposed Rulemaking (ANPRM), Director of the USPTO, Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding

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2021 PTAB Year in Review: Analysis & Trends: Standard Essential Patents at the PTAB: Are SEPs Faring any Differently than non-SEPs? – Impacts and Analysis

Standard Essential Patents are on the Rise, as is Litigation - Standard-essential patents (SEPs) are on the rise as connectivity, a present-day necessity, relies on standards subject to SEPs. It is estimated that by 2025,…more

Injunctive Relief, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding, Patent Infringement, Patent Litigation

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2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no…more

America Invents Act, Biologics, Biotechnology, Claim Construction, Ex Partes Reexamination

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2023 Design Patents Year in Review: Analysis & Trends: U.S. Court of Appeals for the Federal Circuit: New Chapters in Two Ongoing Sagas

In 2023, the Court of Appeals for the Federal Circuit issued three opinions regarding U.S. design patents. The three 2023 opinions are Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., LKQ…more

Appeals, Design Patent, En Banc Review, Intellectual Property Litigation, Intellectual Property Protection

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PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire patent…more

Appeals, Appointments Clause, Arthrex Inc v Smith & Nephew Inc, Claim Construction, Clear and Convincing Evidence

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PTAB Strategies and Insights - September 2020: Does the Federal Circuit Treat APA Challenges Differently if Brought by Petitioner vs. Patent Owner? Yes.

Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR) IPR2017-01410…more

Administrative Procedure Act, Appeals, Burden of Persuasion, Final Written Decisions, Inter Partes Review (IPR) Proceeding

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USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,…more

America Invents Act, Anticipation, Appeals, Claim Construction, Final Written Decisions

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PTAB Strategies and Insights Newsletter - December 2022: Disclaimers Cannot Be Used Intra Proceeding for Claim Construction, Only in Subsequent Proceedings

The Federal Circuit recently held that a Patent Owner could not use disclaimers argued in an IPR proceeding for claim construction within the same IPR proceeding. In CUPP Computing AS v. Trend Micro Inc., Case 20-2262, Judge…more

Claim Construction, Inter Partes Review (IPR) Proceeding, Motion to Amend, Patent Ownership, Patent Trial and Appeal Board

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[Webinar] ITC Section 337 Year in Review - February 28th, 2:00 pm - 3:00 pm EST

Join Directors Daniel E. Yonan, Uma N. Everett, and Paul A. Ainsworth for the "ITC Section 337 Year in Review" webinar on Wednesday, February 28, 2024, at 2:00 p.m. EST. This webinar wraps up our 2023 series, Navigating the…more

Continuing Legal Education, Design Patent, Hyundai, Intellectual Property Litigation, Intellectual Property Protection

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PTAB Strategies and Insights - May 2021: Federal Circuit Starts to Clarify Section 325(e)(2) Estoppel

In Olaplex, Inc. v L’Oréal USA, Inc. the Federal Circuit addressed, among other issues, PGR estoppel in subsequent district court litigation. Here, the Court addressed the timing to raise estoppel regarding written description…more

Claim Construction, Estoppel, Final Written Decisions, L'Oreal, Obviousness

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PTAB Strategies and Insights - November 2021: Are Institution Decisions Set in Stone?

The Leahy-Smith America Invents Act granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review.” 35 U.S.C § 316(a)(4). For the Patent Trial and Appeal Board (“Board”) to review…more

Administrative Procedure Act, America Invents Act, Appeals, Inter Partes Review (IPR) Proceeding, Notice and Comment

See all updates »

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Updated: Dec 28, 2021:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

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150 Harbor Drive, #2760
Sausalito, CA 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

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