News & Analysis as of

Due Diligence Patent Trial and Appeal Board

Goldberg Segalla

Federal Circuit Further Clarifies IPR Estoppel in California Institute of Technology v. Broadcom Limited

Goldberg Segalla on

Key Takeaways - Inter partes review (IPR) estoppel applies to all invalidity grounds that were and could have been reasonably asserted against the claims challenged in the IPR petition. Parties should decide whether...more

Jones Day

Federal Circuit says the PTAB used the Wrong Shade of Diligence

Jones Day on

As the sayings go, diligence is the mother of good luck, and necessity is the mother of invention. But for patents that fall under the pre-AIA, first-to-invent, system, proving diligence can be a necessity for invention. In...more

McDermott Will & Emery

Reasonably Continuous Diligence to Reduction to Practice is Enough

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit explained that diligence towards reduction to practice may be established by a showing of reasonably continuous activity. ATI Techs. ULC v. Iancu, Case Nos. 2016-2222, -2406,...more

Mintz - Intellectual Property Viewpoints

Understanding Antedating of a Prior Art Reference for a Patent

The Federal Circuit’s decision in ATI Technologies ULC v. Iancu (April 11, 2019) highlights the proper standard to use in evaluating whether a claimed invention was reduced to practice before the effective date of a prior art...more

Knobbe Martens

ATI Technologies ULC v. Iancu

Knobbe Martens on

Before Newman, O’Malley, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Diligence requires “reasonably continuous diligence” and is not negated if the inventor works on improvements and evaluates...more

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

PTAB Strategies and Insights - January 2019: Unreviewed Filing Date Notice Dooms Petition

Petitioners beware. Your Notice of Filing date needs to be reviewed immediately – and not just the notice email, because the email does not alert petitioner to defects in filing....more

Foley & Lardner LLP

Swearing Behind A Reference With Reasonably Continuous Diligence

Foley & Lardner LLP on

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

Foley & Lardner LLP

Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

Foley & Lardner LLP on

In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1),...more

Foley & Lardner LLP

Patent Due Diligence: All That Glitters May Not Be PTAB Gold

Foley & Lardner LLP on

An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR) does show whether patents...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

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