New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more
Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more
In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), the case addresses whether failure to re-raise arguments in a request for rehearing before the Patent Trial and Appeals Board (“PTAB”) forfeits...more
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
Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. (PTAB) Aug. 1, 2024). Opinion by Chen, joined by Lourie and Cunningham. Unified filed an IPR petition challenging a Voice Tech patent directed to using voice...more
Addressing forfeiture of issues on appeal and sufficiency of the asserted prior art, the US Court of Appeals for the Federal Circuit upheld a Patent Trial & Appeal Board obviousness finding, explaining that a party does not...more
The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more
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
On July 9, 2024, Director Vidal reversed and remanded a denial of institution of inter partes review (IPR) relating to three Spin Master patents. See Prime Time Toys LLC v. Spin Master, Inc., IPR Nos. 2023-01339, 2023-01348,...more
Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more
ZyXEL Communications Corp. v. UNM Rainforest Innovations, Nos. 2022-2220, -2250 (Fed. Cir. (PTAB) July 22, 2024). Opinion by Dyk, joined by Prost and Stark. UNMRI owns a patent that relates to methods for constructing frame...more
On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more
In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Design Patent Obviousness Test Thrown Out - The U.S. Court of Appeals...more
In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board’s findings...more
On June 13, 2024, the PTAB granted institution of IPR2024-00240 that Merck Sharp & Dohme, LLC (“Merck”) filed in November 2023 challenging claims 1-42 of The Johns Hopkins University’s (“JHU”) U.S. Patent No. 11,591,393 (“the...more
Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more
On remand from the US Court of Appeals for the Federal Circuit in connection with inter partes review (IPR) proceedings, the Patent Trial & Appeal Board considered the petitioner’s reply arguments and evidence regarding the...more
In Ioengine, LLC v. Ingenico Inc. No. 2021-1227, 2021-1331, 2021-1332 (Fed. Cir. May 03, 2024), the case addresses the patentability/validity of three patents. In particular, this case discusses the application of the printed...more
LKQ Corp.1 v. GM Global Tech. Operations LLC, No. 21-2348 (Fed. Cir. May 21, 2024) - On May 21, 2024, the Federal Circuit overruled its long-standing Rosen-Durling obviousness test for design patents and replaced it with...more
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
LKQ Corp., et al. v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. (PTAB) May 21, 2024). En banc opinion by Stoll, joined by Moore, Dyk, Prost, Reyna, Taranto, Chen, Hughes, and Stark. Concurring opinion by...more
The almost-full Federal Circuit (minus two judges) has overturned the Rosen-Durling test for determining design patent obviousness under 35 U.S.C. § 103. Under 35 U.S.C. § 103, A patent for a claimed invention may...more
On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, overruled its longstanding test used to assess the obviousness of design patents....more
On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more