Patents Prior Art United States Patent and Trademark Office

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USPTO Issues Subject Matter Eligibility Update

On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The...more

Federal Circuit Review | April 2016

Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

Estoppel is Not Invoked Simply Because Prior Art is Cumulative

After an Inter Partes Review (IPR) at the United Stated Patent and Trademark Office (USPTO) is completed, validity and/or infringement of the patent may subsequently be determined by a U.S. district court. This situation...more

Federal Circuit Carves Out Exception to IPR Estoppel Provisions

The Federal Circuit recently held that petitioners will not be estopped from raising in subsequent proceedings any noninstituted grounds deemed “redundant” by the Board or otherwise denied without meritorious consideration....more

Federal Circuit Tosses PTAB Decision

The Federal Circuit vacates a decision by the PTAB for relying on facts raised for the first time at oral argument. Executive Summary - On March 15, 2016, the US Court of Appeals for the Federal Circuit vacated...more

No Mention Of Damages Is Permitted During Liability Phase Of Trial

Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more

Federal Circuit Review | February 2016

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more

Blog: Using Continuation Applications Strategically

Continuation applications are wonderful tools for increasing the size and scope of your patent portfolio. With some careful planning, you can use continuation applications to turn your experience with the patent office and...more

GUEST POST: David Lisch on the Basics of Intellectual Property Law for Start-Ups (Part 2-Patents)

A patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” 35 U.S.C. § 101. Unlike trademarks, which protect a brand name and recognition, a...more

Prior Art Enablement Looks to Applicant’s Specification to Determine Ordinary Level of Skill - In re Morsa

Addressing the issue of whether an anticipatory prior art reference was enabling, the U.S. Court of Appeals for the Federal Circuit affirmed the judgment of the U.S. Patent Trademark Office (USPTO) Board of Patent Appeals and...more

Preponderance Standard Applies to Ex Parte Re-examinations - Dome Patent L.P. v. Lee

Addressing the presumption of validity in ex parte re-examinations, the U.S. Court of Appeals for the Federal Circuit reiterated that the presumption of validity does not apply to patents under reexamination in the U.S....more

Claim Amendments Are Not Always What They Seem - R+L Carriers, Inc. v. Qualcomm, Inc.

Addressing whether language added to a claim during ex parte re-examination resulted in substantive changes, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s dismissal of the infringement claims,...more

URGENT: Change to Correction of Claims for Foreign Priority Dates

The Leahy-Smith America Invents Act (AIA) provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent...more

Wertheim, Dynamic Drinkware and the AIA

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the...more

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

District Court Declines to Admit Denial of Petition for Inter Partes Review ("IPR") into Evidence before Jury

In a pending patent infringement action, Apple moved to preclude the plaintiff, Wisconsin Alumni Research Foundations ("WARF") from offering evidence or argument regarding the Patent Office's denial of an IPR that Apple...more

USPTO Announces Change in Practice for Correcting Foreign Priority Claims

In a Federal Register notice published earlier this month (80 Fed. Reg. 60367), the U.S. Patent and Trademark Office announced a change in practice for the correction of errors in foreign priority claims. Under the change in...more

Takeaways from Chisum’s Washington, D.C. September 2015 Seminar

On September 24-25, 2015, the Chisum Patent Academy held a two-day seminar at the offices of Kaye Scholer LLP in Washington, DC to discuss and debate current developments in U.S. patent law. The roundtable seminar group was...more

Progressive Obtains No Insurance at Federal Circuit - Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Paul Gilbert Cole

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

The Suddenly Offensive Claim of Patent Invalidity

At the heart of almost every claim of patent infringement is a battle fought over the validity of the patent at issue. Born out of the idea that an invalid patent cannot be infringed, accused infringers have defended...more

R+L Carriers, Inc. v. Qualcomm, Inc. (Fed. Cir. 2015) - Be Wary of Claim Amendments During Reexamination

Traditional patent law holds that a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of...more

Did Recent Changes in the Patent Laws Turn the Page on the Need for Accurate Laboratory Notebooks?

With the enactment of the Leahy-Smith America Invents Act (AIA), the U.S. patent system moved to a “first inventor to file” approach for examining all applications having an effective filing date on or after March 16, 2013....more

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