It Only Took 13 Years: The Federal Circuit's First Derivation Proceeding Decision — Patents: Post-Grant Podcast
Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Podcast: IP(DC): Inside Patent Reform Efforts, Anticipated Federal Circuit Appeals, and Patent Cases of the Upcoming Supreme Court Term
Is the Patent Litigation Boom Coming to an End?
Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that...more
An obviousness-type double patenting rejection (“ODP”) over a reference patent or application with a different ownership entity creates a trap for the unwary: the Patent Office can make an ODP rejection over a patent issued...more
The U.S. Court of Appeals for the Federal Circuit’s recent decision in Range of Motion Products v. Armaid is another reminder that, if care is not taken, design patent scope can be narrowed significantly in the U.S. through...more
In January 2026, the Federal Circuit issued a nonprecedential opinion in Guardant Health, Inc. v. University of Washington (Slip Op. 2024-1129, Jan. 23, 2026) that, while not binding precedent, is nevertheless highly relevant...more
The Federal Circuit has issued its nonprecedential decision in In re Blue Buffalo Enterprises, Inc. affirming the Patent Trial and Appeal Board’s (“Board”) rejection of several claims of U.S. Patent Application No. 17/136,152...more
Trade secrets can be a valuable part of a company’s IP strategy. A recent decision from the U.S. Court of Appeals for the Federal Circuit, Coda Development S.R.O. v. Goodyear Tire & Rubber Co., underscores that imprecise...more
In Ex parte Baurin (Appeal 2024‑002920), the Patent Trial and Appeal Board (PTAB) denied the examiner’s request for rehearing and reaffirmed its prior reversal of six nonstatutory obviousness‑type double patenting (ODP)...more
In Regents of the University of California v. Broad Institute, Inc., the Federal Circuit addressed the issue of conception and reduction to practice as related to the written description of multiple patent applications. ...more
The US Court of Appeals for the Federal Circuit recently affirmed that, absent specification language supporting a narrower interpretation, the patent claim terms “configured to” and “configured for” are properly construed to...more
On February 13, 2024, then-USPTO Director Vidal issued inventorship guidance for AI-assisted inventions; on November 28, 2025, new USPTO Director Squires revoked and replaced it. But both the earlier guidance and current...more
In the recent case Causam Enterprises, Inc. v. International Trade Commission, the United States Court of Appeals for the Federal Circuit (the “CAFC”) found that an invention assignment agreement that broadly assigned the...more
A U.S. design patent protects how something looks, as opposed to how it works. An applicant conveys that look primarily using drawings. Typically they use line drawings, so that the scope of protection is focused on the shape...more
The Federal Circuit Court of Appeals’ recent decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc., No. 2023-1446 (Fed. Cir. Sept. 30, 2025) reversed summary judgment of infringement on two patents and...more
FOCUS PRODUCTS GROUP INTERNATIONAL, LLC v. KARTRI SALES CO., INC. - Before Moore, Clevenger, and Chen. Appeal from United States District Court for the Southern District of New York - Repeatedly acquiescing to an examiner’s...more
“While the ultimate question of whether a patent applicant derived a claimed invention from another inventor is one of fact, the determination of whether the accused deriver conceived is a question of law, which is based upon...more
Parallel, divisional, or continuation applications can be strategically filed to pursue additional or broader claims. Yet, claim scope across related applications can be constrained by the judicially created doctrine of...more
Key Takeaways: The Federal Circuit held that provisional application language omitted from the final patent cannot support broader claim interpretations....more
On October 1, 2025, the federal government entered a shutdown, and the impact on the IP space is uncertain. While the USPTO and Federal Circuit remain operational for now, proceedings before the ITC are paused, affecting...more
In this edition of The Precedent, we outline the decision in In re: Xencor, Inc. Xencor, Inc. (“Xencor”) filed U.S. Patent Application No. 16/803,690 (the “’690 Application”), which was directed to a method for treating...more
Life sciences and biopharma companies often rely on clinical trial results and "clinically proven effective" language in patent claims, but this approach carries significant risks if key details are publicly disclosed before...more
More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation proceeding. In Global Health Solutions LLC v. Selner, the court clarified...more
In Google LLC v. Sonos, Inc., the U.S. Court of Appeals for the Federal Circuit reversed in part a district court ruling that had held Sonos’s “Zone Scene” patents unenforceable due to prosecution laches. The Federal Circuit...more
On August 26, in Global Health Solutions LLC v. Selner, the Federal Circuit reviewed its first derivation proceeding. The patent applications at issue claimed the same or substantially the same method for preparing an...more
The Federal Circuit recently issued its first review of a derivation proceeding, a rarely used proceeding provided for by the America Invents Act (AIA)....more
In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application...more