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Prior Art United States Patent and Trademark Office Claim Construction

Goodwin

Issue 45: PTAB Trial Tracker

Goodwin on

In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...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

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

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

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

Requester Side Benchmarks for Successful Reexamination Requests

Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

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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 Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Erise IP

Eye on IPRs, March 2024: PTAB’s Claim Construction of Cooling Patent is Hot Issue, SCOTUS Won’t Hear IPR Joinder Challenge

Erise IP on

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: Cooling Patent Restored by Federal Circuit Over PTAB’s Claim Construction - ...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023

Sisvel International S.A. v. Sierra Wireless, Inc., Appeal Nos. 2022-1493, -1547 (Fed. Cir. Oct. 6, 2023) Our Case of the Week falls in a series of cases concerning patents that claim a means for performing a particular...more

McDermott Will & Emery

Chilly Adventures: Design Patent Prior Art Comparison Applies to Article of Manufacture

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Addressing a matter of first impression concerning the scope of prior art relevant to a design patent infringement analysis, the US Court of Appeals for the Federal Circuit concluded that “to qualify as comparison prior art,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023

Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1532, -1533 (Fed. Cir. Aug. 7, 2023) In this week’s case of the week, the Federal Circuit re-affirmed existing precedent that in inter partes review proceedings before...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023 #2

Apple Inc. v. Vidal, Appeal No. 2022-1249 (Fed. Cir. Mar. 13, 2023) In our Case of the Week, the Federal Circuit allowed Apple’s challenge to the Patent Trial and Appeal Board’s (“PTAB”) Fintiv rules to proceed, at least...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

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

PTAB Strategies and Insights Newsletter: May 2022

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

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

WilmerHale

CAFC Patent Cases - September 2021

WilmerHale on

Precedential Federal Circuit Opinions - *WilmerHale represented the Appellee. COMMSCOPE TECHNOLOGIES LLC v. DALI WIRELESS INC. [OPINION] (2020-1817, 2020-1818, 08/24/2021) (REYNA, SCHALL, and STOLL) - Stoll, J....more

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

PTAB Strategies and Insights - August 2021

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

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

Knobbe Martens

Federal Circuit Review - June 2021

Knobbe Martens on

Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches - In Hyatt v. Hirshfeld, Appeal No. 18-2390, the Federal Circuit held that the PTO met its burden to prove prosecution laches for bulk-filed...more

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

PTAB Strategies and Insights - May 2021

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

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