News & Analysis as of

Patents United States Patent and Trademark Office Inter Partes Review (IPR) Proceeding

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

Jones Day on

The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Erise IP

Eye on IPRs: August 2024

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more

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

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more

Jones Day

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more

Erise IP

Eye on IPRs, July 2024: Impact of the End of Chevron on USPTO; PTAB Filings Are Up; and More

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review (IPR) cases and news to bring you the stories that you should know about: What Does the End of Chevron Deference Mean for the USPTO? In June, the...more

McDonnell Boehnen Hulbert & Berghoff LLP

United Therapeutics Corp. v. Liquidia Technologies Inc. (Fed. Cir. 2024)

Zealous advocacy is a hallmark of adversarial proceedings, whether in district court or before the USPTO, where the opportunities for such advocacy have multiplied with the establishment by the Leahy-Smith America Invents Act...more

Knobbe Martens

Federal Circuit Review | July 2024

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In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that  preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more

Knobbe Martens

Estoppel Does Not Apply to Previously Issued Claims

Knobbe Martens on

Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...more

Dinsmore & Shohl LLP

Estoppel Principles in Patent Office Proceedings

Dinsmore & Shohl LLP on

On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...more

Baker Botts L.L.P.

Intellectual Property Report - August 2024

Baker Botts L.L.P. on

Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more

Baker Botts L.L.P.

Be an Expert: Precedential PTAB Decision on Conclusory Expert Testimony

Baker Botts L.L.P. on

A recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on expert declarations in their inter partes reviews (“IPR”). On August 24, 2022, the...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

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Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

Harris Beach PLLC

Court Ruling on Design Patents Could Have Huge Impact

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A recent Federal Circuit decision overturning the long-standing obviousness test for design patents could have wide-ranging implications for design patent owners. The en banc decision in LKQ Corp. et al v. GM Global...more

Fish & Richardson

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

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Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation...more

Jones Day

PTAB Statistics Through Seven Months of FY2024

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The institution rate for post-grant petitions in FY 2024 through the end of April 2024 (the period from Oct. 1, 2023 through April 30, 2024) stands at 66% (427 instituted, 230 denied). This rate remains flat compared to the...more

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

Submitting Trade Secret, Proprietary, and Protective Order Materials in Reexamination and Reissue

The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – June 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

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Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

Fenwick & West LLP

Should a Printed Publication Be Considered in Inter Partes Reviews Based Only on its Publication Date?

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Lynk Labs has presented an argument to the Federal Circuit, asserting that patent applications should only be utilized to invalidate patents in inter partes reviews based on their publication date. Currently, the filing date...more

Fenwick & West LLP

Understanding Director Vidal's Impact on Inter Partes Review Procedures

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United States Patent and Trademark Office Director Kathi Vidal's recent decision emphasizes the importance of General Plastic factor 1 in cases where there is no significant relationship between multiple petitioners. ...more

McDermott Will & Emery

For Statutory Equivalents, Even One Means May Be Enough

A US Patent & Trademark Office (PTO) appeals review panel decided that a means-plus-function (M+F) claim element supported by the disclosure of only a single species is not invalid for indefiniteness or lack of written...more

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more

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