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A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

Dunlap Bennett & Ludwig PLLC

Killing Them Easier: USPTO “Reverses” the Federal Circuit on Genericness

Generic terms—terms that are primarily understood to be the name of a product or service—cannot be trademarks. For example, one cannot register APPLE as a trademark for (you guessed it) apples. When a trademark becomes...more

Rothwell, Figg, Ernst & Manbeck, P.C.

In Qualcomm v. Apple, Federal Circuit Rules Out Applicant Admitted Prior Art As the “Basis” for Inter Partes Review

On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”)...more

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

Jones Day on

Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Supreme Court’s Denial of Apple and Mylan’s Petitions Leaves NHK/Fintiv Rule in Place

On January 18, the Supreme Court denied petitions for writs of certiorari from both Apple and Mylan Laboratories. Each company sought to challenge the NHK/Fintiv framework that was developed by the Patent Trial and Appeal...more

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