News & Analysis as of

Reversal Patent Prosecution

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

PTAB Strategies and Insights Newsletter - March 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.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Valve Corporation v. Ironburg Inventions Ltd., 8...

Valve Corporation petitioned for inter partes review (IPR) of two patents owned by Ironburg Inventions directed to hand held controllers for game consoles. The Patent Trial and Appeal Board (Board) determined that a key...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

McDermott Will & Emery

Targeted Advertising Still Patent Ineligible Subject Matter

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that targeted advertising is still an abstract idea and that a system providing targeted advertising must utilize something more than generic features and routine...more

Knobbe Martens

Examiner Amendments Can Trigger Prosecution History Estoppel

Knobbe Martens on

Amgen, Inc. v. Amneal Pharmas. LLC et al - Before Newman, Lourie, and Taranto.  Appeal from the U.S. District Court for the District of Delaware. Summary: An examiner amendment may give rise to prosecution history...more

Knobbe Martens

Supernus Pharmaceuticals, Inc. Et Al. v. Iancu

Knobbe Martens on

Federal Circuit Summary - Before Dyk, Schall, and Reyna. Appeal from U.S. District Court for the Eastern District of Virginia. Summary: The USPTO is only authorized to reduce Patent Term Adjustment (PTA) for applicant...more

Knobbe Martens

Simpleair, Inc. v. Google, LLC.

Knobbe Martens on

Federal Circuit Summaries - Before Lourie, Reyna, and Chen. Appeal from the U.S. District Court for the Eastern District of Texas, Judge J. Rodney Gilstrap. Summary: Filing a terminal disclaimer to overcome an...more

Jones Day

PTAB Reversed For Giving Process Step In Product Claims No Weight

Jones Day on

Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more

Knobbe Martens

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

Knobbe Martens on

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and...more

Knobbe Martens

Federal Circuit Review | November 2016

Knobbe Martens on

Fraud-Detection Patent Claimed Patent-Ineligible Subject Matter - In FairWarning IP, LLC v. Iatric Systems, Inc., Appeal No. 2015-1985, the Federal Circuit affirmed the district court’s holding that FairWarning’s patent...more

Mintz - Intellectual Property Viewpoints

Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information. Appellant argued in the appeal that the...more

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

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED...more

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