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Patents Prior Art Administrative Proceedings

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2021

Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal Nos. 2020-1475, -1605 (Fed. Cir. May 28, 2021)- In this week’s Case of the Week, the Federal Circuit considered an appeal from the International Trade...more

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

PTAB Strategies and Insights - November 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Troutman Pepper

Inter Partes Review of Pre-AIA Patents is Constitutional

Troutman Pepper on

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged...more

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

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more

Ward and Smith, P.A.

The United States Patent Office Totally Rejected Your Claims? Don't Panic!

Ward and Smith, P.A. on

In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more

BakerHostetler

Federal Circuit Looks to Provisional Patent Application in Determining Claim Scope

BakerHostetler on

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

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

Evidence Alley: Lightweight Fabric: Admissibility versus Weight at the PTAB

Many parties in front of the Patent Trial and Appeal Board (Board) struggle with the handling of evidentiary issues. This struggle is heightened when expert evidence is the focus. In Tietex International, Ltd. v. Precision...more

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