News & Analysis as of

United States Patent and Trademark Office Appeals

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...more

Federal Circuit Clarifies the On-Sale Bar Under the AIA: No Public Disclosure of the Invention Is Required if the Existence of the...

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that...more

Federal Circuit Maintains Pre-AIA Interpretation of the On-Sale Bar for Public Sales

by Brinks Gilson & Lione on

In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA...more

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day on

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more

A Sale is Still a Sale under the AIA

At least so far, the meaning of “on sale” under AIA 35 U.S.C. §102(a)(1) has not changed from pre-AIA 35 U.S.C. §102(b) following a decision by the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,...more

In re Apple Inc. (Fed. Cir. 2017)

Acting as Lexicographers Saves Patent from Being Found Invalid - In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and...more

Novartis’ Gilenya Patent Invalidated as Obvious

On April 12, 2017, the Federal Circuit affirmed the determination by the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (Board) that the claims of U.S. Patent No. 8,324,283 (“the ’283 patent”) were...more

USPTO Claim Construction Standards for Inter Partes Review Proceedings

Confirming long-standing U.S. Patent & Trademark Office (USPTO) practice, the Supreme Court in the Cuozzo Speed Techs. v. Lee decision (Cuozzo), affirmed the USPTO’s broadest reasonable interpretation standard as the...more

USPTO Standards of Review for Inter Partes Review Proceedings

The Administrative Procedures Act (APA) applies to Patent Trial & Appeal Board (PTAB) proceedings, and the Court of Appeals for the Federal Circuit (CAFC) is using the APA to check the PTAB’s tendency to invalidate claims....more

USPTO Errs in Failing to Carry Burden to Support Rejection

Failure of the U.S. Patent & Trademark Office (USPTO) to respond to patentee arguments in more than a conclusory manner constitutes reversible error. Where one party has the burden to establish a particular fact, the Federal...more

Disparaging (or Maybe Not) Trademarks: The Supreme Court Hears Oral Arguments on In Re Tam

On January 18, 2017, the Supreme Court heard oral arguments regarding whether the Lanham Act’s provision refusing federal trademark registration to disparaging marks is invalid under the Free Speech Clause of the First...more

Intellectual Property Bulletin - Winter 2017

by Fenwick & West LLP on

A Smooth Patch in a Rough Road? Governmental Transition and Intellectual Property - Whenever a new Congress convenes, some IP issues come to the fore while others take a back seat. Transition to a new administration in...more

Lee v. Tam: Supreme Court Hears Oral Arguments On Lanham Act Section 2(a) Prohibition of Registration of Disparaging Marks

by Brinks Gilson & Lione on

Earlier this month, the Supreme Court of the United States heard oral arguments in Lee v. Tam to examine the constitutionality of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Section 2(a) prevents the registration of...more

In re Schweickert (Fed. Cir. 2017)

USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose - In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from...more

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

by Weintraub Tobin on

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an...more

Federal Circuit Requires Standing To Appeal An IPR Decision

by Pepper Hamilton LLP on

In the case of Phygenix, Inc. v. ImmunoGen, Inc., the Court of Appeals for the Federal Circuit (CAFC) held that the petitioner (Phygenix) that had unsuccessfully challenged certain claims of ImmunoGen’s U.S. Patent No....more

In re Van Os (Fed. Cir. 2017)

"Intuitive" to Combine Insufficient to Support Obviousness Rejection - The Federal Circuit recently issued a decision in an appeal from the U.S. Patent and Trademark Office Patent Trial and Appeal Board in a case...more

District Court Dismisses USPTO December 2015 Holidays Case

by Foley & Lardner LLP on

On December 2, 2016, Judge O’Grady of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the complaint brought by Elm 3DS Innovations, LLC over the “holidays” declared December...more

Alice Brings a Mix of Gifts For 2016 Holidays

by Fenwick & West LLP on

Like the odd aunt whose holiday gifts can range from the wonderful to the recyclable, in 2016 Alice brought both good and bad tidings. Let’s start with the nice ones....more

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

by Brooks Kushman P.C. on

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness. In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged...more

Celltrion and Hospira Have Launched Inflectra® in U.S.

by Goodwin on

This past April, the FDA approved Inflectra® (infliximab-dyyb), Celltrion and Hospira’s biosimilar of Janssen’s Remicade®. According to papers filed in the Federal Circuit this week, Celltrion and Hospira (collectively,...more

Double-Checking the PTAB

By Bryan K. Wheelock, Principal The Federal Circuit’s docket is burgeoning with Patent Office appeals.  Three years ago there were 118 appeals from the USPTO pending before the Federal Circuit. Today there are 578.  The bulk...more

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review

by Brooks Kushman P.C. on

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written...more

A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB’s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the...more

Swearing Behind A Reference With Reasonably Continuous Diligence

by Foley & Lardner LLP on

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

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