News & Analysis as of

Patent Ownership

Not Necessarily Unfair to Reply on Patent Owner’s Submissions in Obviousness Finding, but Board Failed to Provide Adequate...

In Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co., KG, [2016-2233] (May 11, 2017), the Federal Circuit vacated the Board’s Final Written Decision in IPR2015-00150, finding the Board did not set forth its reasoning in sufficient...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

USPTO Patent Term Adjustment Error Costs Patent Owners Time And Money

by Foley & Lardner LLP on

The USPTO appears to have dropped its plans to overhaul the Information Disclosure Statement (IDS) process, but that’s no excuse for its failure to process IDSs in accordance with its current rules. Most egregiously, the...more

Secondary Considerations Carry The Day

by Jones Day on

We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to...more

Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

by Morgan Lewis on

The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

Federal Circuit Swats Appeal in View of Patent Owner Failures

In the recent decision in Securus Technologies, Inc. v. Global Tel*Link Corporation, the Court of Appeals for the Federal Circuit (CAFC) addressed a number of issues, a couple of which are worth noting as potential pitfalls...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

by Morgan Lewis on

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners. Please see full Digest Report below for more information....more

Issue Four: PTAB Trial Tracker

by Goodwin on

Parallel District Court and PTAB Proceedings - In Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 3:14-cv0886-JDP (W.D. Wis. April 18, 2017), the district court for the Western District of Wisconsin drew a clear line...more

4 Tips to Protect Textile Innovations

Is innovation a key component of your business plan? Will you distinguish yourself with unique product offerings? Whether protecting our men and women in uniform, advancing the treatment of medical conditions, or adding to a...more

Evidence of Priority to Provisional Application and that Prior Art Was Not Work of Another Defeated Obviousness Challenge in IPR

The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more

The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world. Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors...more

Mixed Results: Federal Circuit’s Intervening § 101 Determination Faces PTAB Dissent

by McDermott Will & Emery on

After the US Court of Appeals for the Federal Circuit addressed the very same issue and patent, the Patent Trial and Appeal Board (PTAB) reached a split decision, finding the claims to be patent eligible under § 101 despite...more

PTAB Applies Collateral Estoppel to Exclude Purported Patent Owner

The PTAB issued an order applying collateral estoppel to determine that one purported owner of U.S. Patent 7,215,752 and U.S. Patent 7,844,041 (the “challenged patents”) had no authority to act as the patent owner in...more

Giving Patent Enforcement the Personal Touch May Create Personal Jurisdiction

by McDermott Will & Emery on

Clarifying what type of patent enforcement action might create personal jurisdiction, the US Court of Appeals for the Federal Circuit found that where a patent owner visits a forum to negotiate licensing, that activity...more

Issue Three: Keeping Tabs on the PTAB

by Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Design Patent Survives AIA Review

by McDermott Will & Emery on

In a rare inter partes review (IPR) decision involving a challenge to a design patent, the Patent Trial and Appeal Board (PTAB) issued a final decision finding that the petitioner had not shown that a sole claim of a design...more

Secondary Considerations of Non-Obviousness Cap on Obviousness Showing

by McDermott Will & Emery on

In a rare case where secondary considerations of non-obviousness carried the day, the Patent Trial and Appeal Board (PTAB) concluded that even though the petitioner made a sufficient obviousness showing, the patent owner’s...more

Patent Owner and Counsel to Pay Double Costs for Frivolous Appeal

by McDermott Will & Emery on

Addressing the issue of sanctions for continued litigation after the parties settled all claims, the US Court of Appeals for the Federal Circuit affirmed a district court’s award of attorneys’ fees and costs, and granted...more

Editing the future: A brief introduction to CRISPR

by Allen & Overy LLP on

For those with an interest in life sciences, the rise to prominence of CRISPR has been impossible to ignore. It seems a day does not go by without the discovery of a new application for the technology or a new variant of one...more

PTAB Terminates Interference Proceeding Between University of California and Broad Institute Regarding CRISPR Gene Editing Claims

The Patent Trial and Appeal Board (PTAB) terminated a patent interference proceeding between the University of California (UC) and the Broad Institute (Broad), a joint venture of Harvard University and Massachusetts Institute...more

Issue Two: Keeping Tabs on the PTAB

by Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

PTAB Ruling on CRISPR: No Interference

On Wednesday, February 15, 2017, the Patent Trial and Appeal Board (“PTAB”) ruled in favor of the Broad Institute of MIT and Harvard in a closely watched patent fight with UC Berkeley over the breakthrough CRISPR...more

PTAB Finds Claims Directed to an MRI Machine Patent-Ineligible

The Patent Trial and Appeal Board (“PTAB”) recently held in Ex parte Itagaki and Nishiara (PTAB 2016) that claims reciting a magnetic resonance imaging apparatus are directed to ineligible subject matter under 35 U.S.C. §...more

Managing Patent Portfolios and Drafting Applications To Withstand IPR Challenges

by Brinks Gilson & Lione on

Since implementation of the Leahy-Smith America Invents Act, inter partes review (“IPR”) and other post-grant proceedings have been used successfully to challenge and invalidate thousands of patent claims. Over 2,000 IPR...more

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