News & Analysis as of

Design Patent Patent Validity Patent Trial and Appeal Board

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more

Jones Day

PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute

Jones Day on

In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2021 #2

Kannuu Pty Ltd. v. Samsung Electronics Co., Appeal No. 2021-1638 (Fed. Cir. Oct. 7, 2021) - In our Case of the Week, the Federal Circuit addressed whether a forum selection clause in an NDA may prohibit a party from...more

Kilpatrick

Challenging Design Patent Validity At The PTAB – Pick Your Shots Carefully

Kilpatrick on

The well covered Apple v. Samsung litigation highlighted the power of design patents and the potentially large profit disgorgement damages available for them. Like utility patents, design patents can be challenged through...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Design Patents Continue to Show Survival Strength at the PTAB: Institution Rates Remain Lowest Among All Technology Categories...

While petitioners are successful over 60% of the time in getting the PTAB to institute trial on patents in the biotech, chemical, electrical/computer, mechanical, and business method arts, that is not the case for design...more

Jones Day

Design Patents at the PTAB?

Jones Day on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Why Design Patents Are Surviving Post-Grant Challenges

As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more

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