News & Analysis as of

Obviousness Prior Art Inter Partes Review (IPR) Proceeding

McDermott Will & Emery

Unified Front: No Forfeiture by Failing to Raise Argument in Request for Rehearing

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

Jones Day

Director Provides Reminders For Obviousness Analysis

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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

Erise IP

Eye on IPRs, June 2024: What’s Next for the Design Patent Obviousness Test; Federal Circuit Ruling on Printed Matter

Erise IP on

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

Venable LLP

PTAB Grants Institution of IPR Challenging The Johns Hopkins University Pembrolizumab Patent

Venable LLP on

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

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

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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

Knobbe Martens

Federal Circuit Review | May 2024

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Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more

Knobbe Martens

En Banc Federal Circuit Adopts a New Test for Design Patent Obviousness

Knobbe Martens on

Before Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board....more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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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

Wolf, Greenfield & Sacks, P.C.

LKQ v. GM: What In-House Counsel Needs to Know About This Change in Design Patent Law

On May 21, 2024, the Federal Circuit issued an en banc decision (full court, instead of the typical three-judge panel) in LKQ Corp. et al. v. GM Global Technology Operations LLC, overturning the long-standing obviousness test...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

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On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

AEON Law

Patent Poetry: Federal Circuit Finds No Motive to Combine in Laser Projector Patent Case

AEON Law on

The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more

Jones Day

Availability of Document on Government Website Insufficient for Institution

Jones Day on

In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB...more

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Medtronic, Inc. v. Teleflex Life Sciences Ltd. (Fed. Cir. 2024)

Last week the Federal Circuit handed down a pair of non-precedential decisions affirming the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings.  This post concerns the decision in Medtronic, Inc....more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification...more

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

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

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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Netflix, Inc. v. DivX, LLC, 80 F.4th 1352 (Fed. Cir....

Netflix petitioned for IPR of a DivX patent related to “trick play” functionality, which allows a user to fast forward, rewind, and scene skip frames. Netflix’s petition argued that the challenged claims would have been...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Yita LLC v. MacNeil IP LLC, 69 F.4th 1356 (Fed. Cir....

Yita LLC petitioned for IPR of two patents owned by MacNeil IP LLC. This summary focuses on the proceedings on MacNeil’s patent relating to vehicle floor trays that “closely conform[]” to certain walls of the vehicle foot...more

Fish & Richardson

2023 Post-Grant Annual Report

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2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Jones Day

Conception and Reduction to Practice Dates Matter

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In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more

Sheppard Mullin Richter & Hampton LLP

Anticipation and Obviousness in Patent Law: An Analysis of Recent IPR Decisions

In Incept v. Palette Life Sciences 21-2063, 21-2065 (Fed. Cir. Aug. 16, 2023), the case addresses the Board’s anticipation and obviousness determinations in two IPRs (IPR2020-00002 and IPR2020-00004), where the Board held the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2023

Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more

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

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

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

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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

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