Prior art patents and publications have long been the primary source for anticipation and obviousness assertions by defendants in IP litigation. System art—an actual system or device—is a less common source of prior art due...more
This post is part of MoFo’s 2025 Intersection of AI and Life Sciences blog series. In this blog series, we explore how artificial intelligence is revolutionizing research, innovation, and patient care in the life sciences....more
With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more
3/28/2025
/ Administrative Procedure Act ,
Appeals ,
Corporate Counsel ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Regulatory Reform ,
USPTO
The U.S. Patent and Trademark Office (USPTO) initiated a program on December 1, 2023 to encourage research, development, and innovation in the semiconductor manufacturing space. The Semiconductor Technology Pilot Program...more
1. Introduction The Unified Patent Court (UPC) is a new patent court that will be fully in force starting June 2023 and, along with the Unitary Patent system, represents the biggest change in European patent practice in...more
Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to...more
No recent Patent Trial and Appeal Board (PTAB) decision has been more impactful than Apple Inc. v. Fintiv, Inc., IPR2020-00019 (Mar. 20, 2020). It has led to about 200 discretionary denials of post grant proceedings, sparked...more
Recently, the Federal Circuit issued a series of decisions that address the rights and immunities that the federal and state government have when they become party to a post-grant proceeding before the Patent Trial and Appeal...more
7/12/2019
/ Administrative Agencies ,
America Invents Act ,
Covered Business Method Proceedings ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
SCOTUS
On the same day that patent challengers breathed a sigh of relief once the Supreme Court upheld the constitutionality of inter partes review (IPR) in Oil States, the Court also threw a monkey wrench into the way IPRs will be...more
After the biggest challenge yet to the Patent and Trademark Office’s popular inter partes review proceedings, the name of the game is largely “same old” for today’s Supreme Court decision in Oil States Energy Services, LLC v....more
In an April 1, 2016 Federal Register Notice (“Notice”),1 the United States Patent and Trademark Office (“Office”) finalized amendments to rules governing trial practice for inter partes review, post-grant review, transitional...more
4/4/2016
/ America Invents Act ,
Claim Construction ,
Covered Business Method Proceedings ,
Expert Testimony ,
Federal Register ,
Inter Partes Review (IPR) Proceeding ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for...more