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Knobbe Martens

Analogous Art Must Be Compared to the Challenged Patent

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In Sanofi-Aventis Deutschland GmbH v. Mylan Pharm. Inc., Case No. 2021-1981, the Federal Circuit reversed an obviousness determination by the PTAB. At issue was Sanofi’s reissued U.S. Patent No. RE47,614 (the ’614 patent),...more

Akin Gump Strauss Hauer & Feld LLP

District Court Dismisses Infringement Claims Because the Patent Recited a Patent-Ineligible Method for Real-Time Billable Time...

Judge Engelmayer in the Southern District of New York recently granted a motion to dismiss the complaint because the patent-in-suit is directed to patent-ineligible subject matter under 35 U.S.C. § 101. The patent is directed...more

Mintz - Intellectual Property Viewpoints

Artificial Intelligence (AI) Takes a Role in USPTO Patent Searches

In 2021 the U.S. Patent and Trademark Office (USPTO) developed an Artificial Intelligence (AI) based prototype search system for use by examiners during examination of patent applications. As previously discussed by Mintz,...more

Haug Partners LLP

Mylan Failed to “Immediately Envisage” the Compounds in Merck’s Patent Covering Januvia

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In Mylan Pharm. Inc. v. Merck Sharp & Dohme Corp., the Federal Circuit considered whether prior disclosure of a genus of compounds and their pharmaceutically acceptable salts was sufficient to anticipate, under 35 U.S.C....more

Knobbe Martens

Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation

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M & K HOLDINGS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Moore, Bryson, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: Title-searchable publications shared on a prominent standards-setting...more

Knobbe Martens

It’s a Date – Twitter Reply Proves Prior Art Publication Date

Knobbe Martens on

VIDSTREAM LLC V. TWITTER, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be...more

Foley & Lardner LLP

4 Takeaways of USPTO Analysis of AI on IP

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The United States Patent and Trademark Office (USPTO) published a report digesting the feedback it received concerning issues of patent policy for artificial intelligence (AI) technologies. The report, “Public Views on...more

McDonnell Boehnen Hulbert & Berghoff LLP

On the Patent Eligibility of Graphical User Interfaces: Part I

The evolution of graphical user interfaces parallels the evolution of computing technology itself.  As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more

Knobbe Martens

Federal Circuit Review - September 2020

Knobbe Martens on

Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds - In Network-1 Technologies, Inc. v. Hewlett-Packard Company, Hewlett Packard Enterprise Company , Appeal No. 18-2338, the Federal Circuit held that a party...more

Troutman Pepper

Federal Circuit Review - Issue 274

Troutman Pepper on

274-1 Federal Circuit Revisits American Axle & Manufacturing; Case Remanded to Determine if One of the “Hooke’s Law” Claims is Ineligible under Other Theories of Eligibility - The Federal Circuit recently issued a modified...more

Knobbe Martens

Federal Circuit Review - June 2020

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Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

McDermott Will & Emery

Special Report - 2019 IP Law Year in Review - Patents

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2019 was another milestone year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that will affect your company’s litigation, patent prosecution or...more

Brownstein Hyatt Farber Schreck

Federal Circuit Infers Disavowal, Limiting Scope of Chamberlain Patent

The Federal Circuit has issued another opinion arising from the patent conflict between The Chamberlain Group and Techtronic Industries—and, once again, a patent owned by Chamberlain suffered a major blow. In Techtronic...more

Mintz - Intellectual Property Viewpoints

PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of...

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up – August 2019

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This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases....more

Jones Day

Verbal Aspect of Claim Limits Design Patent Scope in Curver Luxembourg v. Home Expressions

Jones Day on

The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more

McDonnell Boehnen Hulbert & Berghoff LLP

Mayne Pharma Int'l v. Merck Sharp & Dohme Corp. (Fed. Cir. 2019)

The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this...more

Mintz - Intellectual Property Viewpoints

Collateral Estoppel Bars Assertion of Patent Claims That Do Not “Materially Alter the Question of Invalidity” Relative to Claims...

On April 4, 2019, Chief Judge Patti Saris of the United States District Court for the District of Massachusetts held in Intellectual Ventures I, LLC v. Lenovo Group Ltd. that a final determination of invalidity in inter...more

Smart & Biggar

On the (Quebec Health) Record: the Federal Court holds the Quebec government liable for patent infringement

Smart & Biggar on

In a digital-age David versus Goliath case, Dr. Luc Bessette has come head-to-head with the Quebec government in a battle over rights to a technology solution that provides shared access to critical medical information...more

Faegre Drinker Biddle & Reath LLP

3 Areas of Renewed Interest for Biotechnology, Chemical and Pharmaceutical Patents

The United States Patent & Trademark Office (USPTO) has renewed its interest in obviousness, functional claiming and requests for information, especially for biotechnology, chemical and pharmaceutical patents. The USPTO...more

McDermott Will & Emery

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

McDermott Will & Emery

PTAB Reverses Obviousness Finding After Remand

McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB...more

McDermott Will & Emery

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

McDermott Will & Emery on

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

Mintz - Intellectual Property Viewpoints

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Mintz - Intellectual Property Viewpoints

The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously...more

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