In February’s Part I article (“First Strike“), we described how anonymous ex parte reexamination can function as an early-stage lever, used by potential defendants and other market participants to reduce assertion risk before...more
The Federal Circuit’s decision in Mondis Technology Ltd. v. LG Electronics serves as a clear reminder that patent claims are only as strong as the disclosure that supports them. Written description issues often remain dormant...more
With the advent of claim fees in 2022, applicants must now limit the number of claims in their Canadian patent applications to avoid government fees. While cancelling claims (particularly dependent claims) is the simplest...more
The United States Patent and Trademark Office (USPTO) is launching the Streamlined Claim Set Pilot Program (the pilot program) to evaluate whether limiting claim number and format can reduce pendency and improve examination...more
In a Federal Register Notice published October 27, 2025 (“Notice”), the U.S. Patent and Trademark Office (USPTO) announced a new pilot program called the “Streamlined Claim Set Pilot Program” (hereinafter “Pilot Program”)....more
The United States Patent and Trademark Office (USPTO) has launched a new expedited examination pilot program: the “Streamlined Claim Set Pilot Program.” It is for certain patent applications with no more than one independent...more
In this edition of The Precedent, we outline the Federal Circuit's decision in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC. Overview - This case addresses prosecution history estoppel and the doctrine of equivalence....more
Over the past couple of years we have discussed the important role a broadening or narrowing reissue can play in proper portfolio development and resuscitation of a patent or patent family after invalidation in court or the...more
Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more
On July 18, 2025, the U.S. Court of Appeals for the Federal Circuit reversed a $106 million jury verdict in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, No. 2023-2153, finding that Colibri’s infringement claim under...more
Takeaways - -Intra-patent claim inconsistencies are errors correctible via reissue. -Subtle legal distinctions in reissue may require PTAB appeals. Patent prosecution errors occur. One such error that occurs is...more
The U.S. Patent and Trademark Office (USPTO) is terminating the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which provided examiners additional time to search and/or consider responses following final rejection of...more
The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more
In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more
In Sawstop Holding LLC v. Vidal, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejection. The...more
On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial...more
CHUDIK V. HIRSHFELD - Before Taranto, Bryson, and Hughes. Appeal from the United State District Court for the Eastern District of Virginia - Summary: An examiner’s self-reversal may not qualify as “reversing an...more
When granted with a patent right, the patentee may file a request for amending the description, claim(s) or drawing(s) of the granted patent. Hence, once an alleged infringer has presented prior evidence sufficient to...more
The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc...more
As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more
This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...more
On May 20th, 2020, in an attempt to improve the timeliness and efficiency of its services, the Canadian Intellectual Property Office formally allowed trademark examiners to enter amendments to trademark applications in...more
In Nike, Inc. v. Adidas AG, No. 19-1262 (Fed. Cir. Apr. 9, 2020), the Federal Circuit offered important guidance to Patent Trial and Appeal Board (PTAB) litigants regarding how the notice requirements of the Administrative...more
The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more