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Federal Circuit Says Secret Prior Art Is Prior Art for All Purposes

In Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., the Federal Circuit agreed with the district court that Ethicon’s prototype constituted prior art under 35 USC § 102(g) based on its earlier date of conception, but...more

Practitioner Guilty of Inequitable Conduct: Considerations and Takeaways From the American Calcar v. Honda Decision

In its 2011 Therasense, Inc. v. Becton Dickinson & Co. decision, the Court of Appeals for the Federal Circuit set forth a more forgiving "but-for" causality standard for determining whether a patent is unenforceable due to...more

High Evidentiary Threshold for Diligence in Reducing Invention to Practice

Oracle Corp. v. Click-to-Call Technologies LP - Addressing the evidentiary threshold to show diligence in constructive or actual reduction to practice between the date of a prior art reference and the date the...more

Patent Ever-Greening: Not So Obvious

Although the Federal Circuit recently affirmed a district court’s decision on patent invalidity based on obviousness-type double patenting, the case provides an impetus to review terminal disclaimer practice within a patent...more

Independent Corroboration Required To Prove Conception

Microsoft Corp. v. SurfCast, Inc. - Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable,...more

IPR Patent Owner Succeeds in Antedating Key Prior Art

A witness credibility battle erupted in Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, where the Board found that Patent Owner antedated a key prior art reference…despite the fact that the inventor testified...more

Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - Addressing the burden of establishing the patentability of claim amendments in inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and...more

Prior Art-Related Submissions That Go to the Merits Are Supplemental “Evidence,” Not Supplemental “Information”

FLIR Systems, Inc. v. Leak Surveys, Inc. - Addressing whether prior-art-related submissions by a petitioner in an inter partes review (IPR) proceeding are supplemental information under 37 C.F.R. 42.123(a) or...more

PTAB Update -- Amending Claims in an IPR Proceedings

Just what does it take to amend your claims during an IPR proceeding before the PTAB? Of course, the America Invents Act ("AIA") specifically provides that Patent Owners may file one motion to amend the claims. AIA, §...more

Federal Circuit Notes High Burden of Invoking Inherency for Obviousness

In Par Pharmaceutical Inc. v. Twi Pharmaceuticals, Inc., the Federal Circuit vacated and remanded the district court decision holding the Par claims at issue obvious. The district court decision rested in part on the doctrine...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Fall 2014 - Vol. 12, Issue 4

In This Issue: - Prior Art Redefined Under the AIA - PTAB Holds a Firm Line on Additional Discovery - The Art of Prior Art Searching - Anticipating a Federal Trade Secret Law - Trademark...more

Draft IEEE Standard Not a Printed Publication in IPR

Whether the art presented in an inter partes review petition is a printed publication has arisen more frequently as Petitioners push the envelope to take advantage of the benefits of IPR proceedings. To that end, the PTAB was...more

Patent Owner Must Prove Patentability of Proposed Amended Claims (Including Prior Art Date)

Neste Oil Oyj v. REG Synthetic Fuels, LLC - In an order addressing a motion for a sur-reply to introduce evidence to antedate a prior art reference in an inter partes review (IPR) proceeding, the U.S. Patent and...more

Seeing Beyond the Doggie Wear: What MCR Innovations Teaches about the Obviousness of Design Patents in the Garment Industry

In the United States, patent protection can be afforded to aesthetic innovation (design patents), and functional innovation (utility patents). Because binding precedent relating to design patents is relatively sparse,...more

The Art of Prior Art Searching

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a...more

The USPTO Is Off-Key With International Patent Law Harmonization

As a leader in science, technology and innovation, the United States long has played a central role in global intellectual property matters. As the world’s largest economy, the United States has played a central role in trade...more

PTAB Adopts Broad View of Inherency Doctrine

Ariosa Diagnostics v. Isis Innovation Ltd. - Addressing a variety of issues in a recent inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) determined that...more

Prior Art Redefined Under the AIA

The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. Thanks to the...more

In denying attorney’s fees under 35 U.S.C. § 285, Judge Buchwald reviews post-Octane decisions.

Dr. Paula Small v. Implant Direct MFG. LLC d/b/a Implant Direct, LLC - Case Number: 1:06-cv-00683-NRB - In 2013, defendants won summary judgment on two dental implant patents. One patent was found invalid...more

USPTO Explores Crowdsourcing Prior Art

In a Federal Register Notice dated November 12, 2014, the USPTO solicited public comments on the “use of crowdsourcing to identify relevant prior art,” and announced a related roundtable to be held on December 2, 2014 at the...more

PTAB Rejects End-Around the IPR Printed Publication Requirement

Post Grant Review provides a breath of fresh air to Patent Office patentability challenge procedures by allowing prior sales and prior uses as eligible prior art. But, of course, PGR is only available for post-AIA patents and...more

Design Patent Case Digest: Wallace v. Ideavillage Products Corp.

Decision Date: September 15, 2014 - Court: District of New Jersey - Patents: D485,990 - Holding: Defendant’s motion for summary judgment: GRANTED - Opinion: Allyson Wallace, initially acting pro se,...more

“Soda-Pop” Bottle Caps Can Be Analogous Art for Flash Chromatography Cartridges

Scientific Plastic Products, Inc. v. Biotage AB - Addressing the issue of analogous art in the context of inter partes reexamination, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S....more

PTAB Cracking Down on Serial IPR Petitions

November 4, 2014 — The estoppels of 35 U.S.C. §315(e)(1) don’t kick in to bar a petitioner from filing a second inter partes review petition against the same patent until a final written decision is rendered in the first....more

“Why, I declare” … Proper Use of Evidentiary Declarations under New (Post-AIA) Rule 37 C.F.R. 1.130

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. While the AIA alters U.S. patent practice in several ways, perhaps the most significant change brought about by the law is the switch from a...more

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