News & Analysis as of

Inventors Patent Invalidity

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024 #3

Allergan USA, Inc. v. MSN Laboratories Private Ltd., Appeal No. 2024-1061 (Fed. Cir. August 13, 2024) In this week’s Case of the Week, the Federal Circuit clarifies rules relating to when an applicant’s patent can be...more

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”

This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024

Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024) In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of...more

WilmerHale

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness as “Improperly Rigid”

WilmerHale on

Precedential and Key Federal Circuit Opinions - LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [OPINION] (2021-2348, 5/21/24) Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark - Stoll,...more

Morris, Manning & Martin, LLP

Could your patent be invalid if your attorney uses AI in the drafting process?

The Federal Circuit held in Thaler v. Vidal that an “inventor” must be a human.  During the patent drafting process, the human inventors meet with the patent attorney to describe the invention.  In this meeting, the patent...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

Jones Day on

The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

Smart & Biggar

PM(NOC) Regulations: Six-year anniversary of major amendments

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September 21, 2023, marked the sixth anniversary of the significant amendments to the Patented Medicines (Notice of Compliance) Regulations (Regulations). This article provides an update on activities in the sixth year...more

WilmerHale

Federal Circuit Patent Watch: Patent owner assumes temporary burden of production when attempting to antedate prior art

WilmerHale on

Precedential Federal Circuit Opinions - BLUE GENTIAN, LLC v. TRISTAR PRODUCTS, INC. (21-2316, 6/9/23) (Prost, Chen, and Stark) - Prost, J. The Court affirmed the district court’s decision finding that a nonparty...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023

Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

Bradley Arant Boult Cummings LLP

Don’t Be Barred: Reminder to Inventors and Patent Applicants – Do NOT Bring Your Invention into Public View Before Filing a Patent...

The Federal Circuit’s recent decision in Minerva Surgical, Inc. v. Hologic, Inc. provides a timeline reminder to inventors and patent applicants: Do not bring your invention into public view before you have filed your patent...more

McDermott Will & Emery

2023 IP Outlook: Improper Inventorship in US Patent Litigations

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Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Manatt, Phelps & Phillips, LLP

Inventor’s Own Provisional Application Invalidated Invention When Priority Denied

In Konda v. Flex Logix Technologies, Inc., the Federal Circuit held that a provisional application incorporated by reference in a Patent Cooperation Treaty (PCT) application was prior art against the later filed claims of the...more

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

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

Dechert LLP

Inventive AI: European Patent Office finds that only humans can be inventors

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Patent offices and courts around the world have recently been grappling with the question of whether an AI system can be the inventor of a patent. This has been prompted by Dr. Stephen Thaler’s applications to designate his...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #5

MLC Intellectual Property, LLC v. Micron Technology, Inc., Appeal No. 2020-1413 (Fed. Cir. Aug. 26, 2021) - For those interested in an important Section 112 written description case, we recommend reading the Juno...more

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

PTAB Strategies and Insights - May 2021: Can Forum Selection Clauses Prohibit IPRs?

New Vision Gamingi touches on an interesting forum-selection issue currently before the Federal Circuit in at least one other case. The issue is the enforceability of a forum-selection clause in an agreement between parties...more

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

PTAB Strategies and Insights - May 2021

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...more

Womble Bond Dickinson

Inventor Assignments – Problems on the Horizon

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Two weeks ago, the Supreme Court heard oral argument in Minerva Surgical Inc. v. Hologic, Inc. over the rather arcane issue of assignor estoppel. Stop - I can figuratively feel your eyes rolling after reading the phase...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Files Motion Opposing CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)

Last December, Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") filed its Substantive Motion No. 3 under 37 C.F.R. § 41.121(a)(1) asking for judgment of...more

Miller Canfield

IP Litigation Quarterly Update: Q3 2020

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In a relatively quiet third quarter of 2020, the Federal Circuit decided issues on joinder, estoppel, claim preclusion, and importantly, upheld the Patent Trial and Appeal Board process finding that cancellation of patent...more

Fox Rothschild LLP

Judge Connolly Grants Plaintiffs’ Request To Preclude Defendant From Maintaining Its Invalidity Defense Based On An Undisclosed...

Fox Rothschild LLP on

By Memorandum Order entered by The Honorable Colm F. Connolly in Pharmacyclics LLC et al. v. Cipla Limited, et al., Civil Action No. 18-192-CFC/CJB (D.Del. November 10, 2020) (Consolidated), the Court granted Plaintiffs’...more

McDermott Will & Emery

Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

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The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

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Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

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