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PTAB Issues First Post-LKQ Design Patent Decision

On August 6, 2024, the PTAB issued its first written decision applying a new test for obviousness of design patents. In Next Step Group, Inc. v. Deckers Outdoor Corp., IPR2024-00525, Paper 16 (P.T.A.B. Aug. 6, 2024)...more

Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

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

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

IPR Estoppel A Paper Tiger?

After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or reasonably could...more

Post-Arthrex PTAB Appeals Mostly Moving On From Constitutional Kerfuffle

This is a follow up to our earlier post about the fallout from the Supreme Court’s June 21, 2021 decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal...more

JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges [Audio]

The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more

If IPR’s Not Your Bag, Consider Ex Parte Reexamination

These days, we generally think about inter partes review as a first option to challenge patentability.  Rightly so.  But don’t forget about ex parte reexamination (“XPR”).  Even in the IPR era, patent challengers are still...more

On-Again, Off-Again Inventorship

Deciding who invented patents can be “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972). But identifying who...more

Opening a Can of Worms for Design Patent Obviousness?

Design patent obviousness requires a heavy threshold burden of proof. Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design. Below is an...more

“Exceptional” IPRs And § 285

Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a...more

325(d) And Printed Publication Issues Doom Petition

The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the...more

Patent Owner Finds The “Achilles Heel” In Petitioner’s Invalidity Theory

Like utility patents, design patent validity can be challenged in inter partes review (“IPR”) proceedings. Nonetheless, the Patent Trial and Appeal Board (“PTAB” or the “Board”) tends to reach different results in design...more

The PTAB Chats Designs: And Now, for Something Completely Different

On February 1, the PTAB held its first “Boardside Chat” of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents. Not only are such proceedings less common for design patents than...more

IPR Proceedings: Extrinsic or Intrinsic Evidence for Claim Construction?

In district courts’ claim construction analyses, intrinsic evidence is of paramount importance. Although extrinsic evidence “may be useful to the court,” it is considered “less significant” than the claim language,...more

Design Patents at the PTAB?

In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more

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