New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
The U.S. Court of Appeals for the Federal Circuit sitting en banc recently overruled the long-standing test for determining obviousness of design patents in LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global...more
The United States Patent and Trademark Office (USPTO) has issued a Memorandum to the Corps of Patent Examiners (the “Guidance”), attempting to provide clarity in the wake of the Federal Circuit’s highly anticipated en banc...more
In its first en banc patent decision since 2018, the Federal Circuit overruled the longstanding obviousness test for design patents under 35 U.S.C. 103. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21‑2348 slip op. (Fed....more
For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more
On February 27, 2024, the US Patent & Trademark Office (PTO) published updated guidance for examiners on how to make a proper determination of obviousness. The guidance expands upon and reinforces the legal framework for...more
On February 27, the United States Patent and Trademark Office (USPTO) released new guidance aimed at enhancing the methodology used to assess the obviousness of patent applications. The updated USPTO guidance emphasizes the...more
On February 22, 2021, the Federal Circuit addressed for the first time whether collateral estoppel (i.e., issue preclusion) was applicable in inter partes reexamination proceedings. The case is SynQor, Inc. v. Vicor Corp.,...more
Google applied for a patent on video-on-demand systems. The Patent Trial and Appeal Board affirmed the examiner’s rejection of the claims as obvious, stating that Google’s responses to the examiner’s rejections were...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
On October 15, 2019, the PTAB designated as informative two decisions providing insight into when it is an appropriate for an examiner to reply upon a so-called “design choice” rationale in support of an obviousness...more
The United States Patent & Trademark Office (USPTO) has renewed its interest in obviousness, functional claiming and requests for information, especially for biotechnology, chemical and pharmaceutical patents. The USPTO...more
In E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit reversed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that had upheld Synvina’s chemical process patent against an obviousness challenge...more
In Impax Laboratories Inc. v. Lannett Holdings Inc., the Federal Circuit upheld the district court decision finding that defendants had failed to establish obviousness of AstraZeneca’s Zomig patents (directed to intranasal...more
Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more
Federal Circuit Summaries - Before Lourie, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board (“PTAB”). Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the...more
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more
On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...more
Federal Circuit Summaries - Before Lourie, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in...more
Patent applicants often draft claims to cover various ranges of physical or chemical characteristics. Of primary concern during prosecution are prior art documents that disclose similar, but not overlapping, ranges. In In re...more
Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more
Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more
Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more
This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more
In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more
As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more