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Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...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

AEON Law

Patent Poetry: Federal Circuit Overturns Design Patent Obviousness Test

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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

Knobbe Martens

Infringement Judgement Is Only Final When There’s Nothing Left to Do but Execute

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Before Lourie, Hughes, and Stark. Appeal from the U.S. District Court for the Eastern District of Texas. Summary: An infringement judgment is only sufficiently “final” to be immune from a later finding of unpatentability if...more

Akin Gump Strauss Hauer & Feld LLP

Protective Order Forecloses Participation of Litigation Counsel in Motion to Amend Process Before the PTAB

In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more

Haug Partners LLP

Can Machines Invent Drugs: Patent Law Seeks to Prioritize Human Innovation as Artificial Intelligence Inventions Rise

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In the 1950’s, Alan Turing famously asked, “Can machines think?” Decades later, artificial  intelligence—a term coined after Turing’s death—has become a facet of our everyday lives.  Artificial Intelligence (AI) can be used...more

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

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

AEON Law

Patent Poetry: Federal Circuit: “Improving User Experience” Isn’t Patentable

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The Federal Circuit has affirmed a lower court decision that patent claims for methods and systems for improving how search results are displayed to users are patent-ineligible. The case is IBM Corp. v. Zillow Group, Inc....more

MoFo Life Sciences

Standards For Inventiveness And Disclosure For Antibody Claims Across Jurisdictions

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Standards for patenting antibodies have substantially tightened over the last few years restricting scope of antibody claims—or, in some cases, undermining the validity of granted patents. Most recently, Singapore updated...more

Levenfeld Pearlstein, LLC

Intellectual Property Primer Series: Patent Basics

A patent does not give the owner the right to do anything. Rather, it gives the patent owner the right to exclude others from making, using, selling, offering to sell, and/or importing the claimed invention, which most...more

Proskauer - Minding Your Business

Recent Federal Circuit Decision Highlights Importance of Analogous Prior Art Doctrine

The Court of Appeals for the Federal Circuit recently addressed the issue of “analogous prior art,” a patent law doctrine fundamental to the legal determination of whether a patent is invalid as obvious over the prior art....more

MoFo Life Sciences

Retaining Your Patent Priority Date In Europe: Formal Priority Given A Rebuttable Presumption In Favor Of Applicant/Patentee

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On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more

Mintz - Intellectual Property Viewpoints

Picture Claims as an Effective Patent Strategy: Top 10 Reasons to Precisely Tailor Your Patent Claim

A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and...more

Foley & Lardner LLP

Federal Circuit Considers Patentability of Overlapping Ranges

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In UCB Inc. v. Actavis Laboratories UT Inc., the Federal Circuit affirmed the district court’s judgement of invalidity on obviousness grounds but reversed the finding of anticipation. In reaching its decision on anticipation,...more

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

PTAB Strategies and Insights Newsletter - December 2022: Broad Motion To Amend Scope Available in AIA Proceedings So Long as...

The Federal Circuit recently held that clarifying and §112-based amendments are allowed in addition to narrowing amendments used to overcome prior art teachings in Motions to Amend during PTAB proceedings. In American...more

Rothwell, Figg, Ernst & Manbeck, P.C.

How to Effectively Use Patent Counsel to Navigate the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug...more

International Lawyers Network

It`s Not Only Patents: Planning and Implementing to Protect Innovation

For investors in innovation, it is a priority to count on legal mechanisms to secure some level of exclusivity in the exploitation of their innovations, to seek a return on their investment. The first legal alternative...more

Rothwell, Figg, Ernst & Manbeck, P.C.

PTAB Sanctions Non-Practicing Entity for Seeking to Abuse the IPR Process in Order to Extort Money

Last month, in OpenSky Industries v. VLSI Technology LLC, IPR2021-01064 (Oct. 4, 2022), the Director of the Patent Trial and Appeal Board (PTAB) issued a precedential decision regarding abuse of process. The decision...more

Dunlap Bennett & Ludwig PLLC

Novelty and Non-Obviousness: How to Define a Patentable Invention

If you’ve ever applied for a utility patent before, you’re probably familiar with the three primary considerations that dictate whether you can obtain a patent or not: usefulness, novelty, and non-obviousness. With only three...more

MoFo Life Sciences

Sawing Through Patent Term—The Federal Circuit’s Recent Decision In Sawstop

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Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to...more

McDermott Will & Emery

PTO Issues Notice on Duties of Disclosure and Reasonable Inquiry

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The US Patent & Trademark Office (PTO) issued a notice on July 29, 2022, titled “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and...more

McDermott Will & Emery

Argument Forfeit in Remand Notwithstanding Modified Claim Construction

In the second appeal arising from an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that its revised claim construction from the first appeal did not permit the patent challenger to raise a...more

Dunlap Bennett & Ludwig PLLC

Advantages of a Professional Patentability Search

A patentability search (also referred to as a novelty search) is an attempt to identify relevant prior art and analyze those results to inform an inventor or business the intellectual property is to be assigned to and whether...more

Linda Liu & Partners

Make Full Use of Supplementary Experimental Data in Chemical Patent Applications in China

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In recent years, post-filing supplementary experimental data has become a very hot topic in Chinese patent practice. It is attracting much attention from IP practitioners around the world. ...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Party Stipulations during IPR: Incompatible with the Statutory Scheme?

In late December, in Intel Corp. v. Qualcomm Inc., 2020-1828 (Fed. Cir. Dec. 28, 2021), the Federal Circuit found the PTAB erred by accepting Intel’s stipulation concerning the indefiniteness of a means-plus-function claim...more

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