News & Analysis as of

Patents America Invents Act

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: On-Sale Bar Still Applies to Secret Use of a Patented Method Under AIA

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective...more

Knobbe Martens

Federal Circuit Review | August 2024

Knobbe Martens on

Specify the Steps of Information Manipulation or Lose under § 101 - In Mobile Acuity Ltd. v. Blippar Ltd. Appeal No. 22-2216, the Federal Circuit held that patent claims that merely recite result-orientated, functional...more

Goodwin

Issue 45: PTAB Trial Tracker

Goodwin on

In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more

Irwin IP LLP

On-Sale Bar Arguments Fizzle Out at the Federal Circuit 

Irwin IP LLP on

Celanese Int'l Corp. v. Int'l Trade Comm'n, No. 2022-1827, 2024 WL 3747277, at *1 (Fed. Cir. Aug. 12, 2024) - Manufacturers beware! Your sales of products based on secret manufacturing processes may invalidate your...more

McDermott Will & Emery

Patent by Secret Process: Perils of Pre-Patent Profiting

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission’s (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because products made using...more

Ballard Spahr LLP

Life Sciences Industry Update: 2024 Mid-Year Report

Ballard Spahr LLP on

ARTIFICIAL INTELLIGENCE IN LIFE SCIENCES - Life sciences companies are forming AI-driven strategic collaborations with tech giants, creating synergy that promises to revolutionize the industry. Companies like NVIDIA,...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

A&O Shearman on

In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

Knobbe Martens

The On-Sale Bar Still Applies to the Products of Secret Processes

Knobbe Martens on

CELANESE INTERNATIONAL CORPORATION v. ITC - Before Reyna, Mayer, and Cunningham. Appeal from the International Trade Commission. Summary: Process patent claims are invalid under the on-sale bar (35 U.S.C. § 102(a)(1)) when...more

WilmerHale

Federal Circuit Confirms “Secret Sales” Can Trigger AIA’s On-Sale Bar

WilmerHale on

On August 12, 2024, the Federal Circuit published its decision in Celanese International Corp. et al. v. International Trade Commission. The Federal Circuit concluded that, under the America Invents Act (AIA), patent claims...more

A&O Shearman

Federal Circuit Provides Guidance On 35 U.S.C. § 102(b)(2)(B)’s Public Disclosure Exception To Prior Art

A&O Shearman on

In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C....more

McDermott Will & Emery

Private Sale Means Public Fail

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that a private sale of a product embodying the claimed invention did not qualify as a “public disclosure” under 35 U.S.C. §...more

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

Jones Day

PTAB Updates its SOP for Assigning Judges to Panels

Jones Day on

The PTAB recently updated its Standard Operating Procedure 1 (SOP), which describes the process and guidelines for assigning judges to panels in all jurisdictions of the Board.  This blog post highlights some of the key...more

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

What is a Streamlined Reexamination Request (SRR)?

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more

Venable LLP

Loper Decision Impact on Patent Law

Venable LLP on

Venable has offered general thoughts on the potential fallout from the Supreme Court's reversal of the long-standing Chevron deference, as well as practice area-specific analysis. Here, the Intellectual Property Litigation...more

Jones Day

PTAB Nixes IPR Revival

Jones Day on

On May 6th, 2024, the PTAB declined Ubiquiti Inc.’s (“Petitioner’s”) request to institute inter partes review. Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech., IPR2024-00148, Paper 12 (May 6, 2024). The PTAB...more

WilmerHale

The Interplay Key Decisions at the Intersection of Antitrust and Life Sciences - June 2024

WilmerHale on

Court Orders Delisting of Patents from Orange Book and Denies Motion to Dismiss Antitrust Counterclaims for Improper Orange Book Listings. On June 10, Judge Stanley Chesler of the District of New Jersey entered judgment on...more

MoFo Life Sciences

Federal Court Invalidates Dosing Patent Based On Clinical Trials Disclosure

MoFo Life Sciences on

As an essential component of the drug development process, human clinical trials assist in determining whether a given drug will serve its intended purpose, but patent applicants should consider disclosure of such trials in...more

Fenwick & West LLP

Understanding the Latest on Director Review in AIA Proceedings

Fenwick & West LLP on

The NPRM proposals align with interim guidance on requesting director review for key AIA trial decisions. Following the Arthrex v. Smith & Nephew ruling, director review by the USPTO Director remains crucial for addressing...more

Jones Day

USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

Jones Day on

The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more

BakerHostetler

The End of the Fight Against Fintiv

BakerHostetler on

Inter partes reviews (IPRs) and post-grant reviews (PGRs) are proceedings in front of the Patent Trial and Appeal Board (PTAB) that allow a petitioner to challenge a patent’s validity and a patent owner to defend that...more

WilmerHale

PTAB/USPTO Update - May 2024

WilmerHale on

On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

Venable LLP

PTAB Proposes Rules Governing Director Review of PTAB Decisions

Venable LLP on

On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures....more

1,413 Results
 / 
View per page
Page: of 57

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide