News & Analysis as of

Inter Partes Review (IPR) Proceeding Patents Patent Applications

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

Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more

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

Key Patent Considerations for Antibody Drug Conjugates (ADCs)

In 1910, German scientist Paul Ehrlich introduced a groundbreaking concept to the world: chemical compounds could be engineered to interact with unique receptors on disease-causing cells while avoiding interaction with...more

WilmerHale

PTAB/USPTO Update - April 2025

WilmerHale on

On March 10, John Squires was officially nominated to be Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office....more

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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Apple Inc. v. Gesture Technology Partners

Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025) Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based...more

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

Antedating Prior Art in Reissue and Reexamination: Part 1

Takeaways - - Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. - “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Clarifies Timing Issues Associated with Pre-AIA Patent Applications in Lynk Labs, Inc. v. Samsung...

In this edition of The Precedent, we outline the recent federal circuit decision in Lynk Labs, Inc. v. Samsung Elecs. Co. This case addresses the date on which a pre-AIA published patent application obtains its status as...more

Knobbe Martens

Federal Circuit Review | January 2025

Knobbe Martens on

In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as...more

Hudnell Law Group

Published but not Public? Federal Circuit Confirms Published Patent Applications Count as Prior Art from Filing Date in IPRs.

Hudnell Law Group on

On January 14, 2025, the United States Court of Appeals for the Federal Circuit issued a precedential decision in Lynk Labs, Inc. v. Samsung Electronics Co., No. 23-2346 (Fed. Cir. Jan. 14, 2025), addressing whether a...more

Dorsey & Whitney LLP

When Is a Published Patent Application Prior Art?

Dorsey & Whitney LLP on

In a precedential opinion entered on January 14, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”) invalidating claims of a patent on...more

Irwin IP LLP

Published Patent Applications as Prior Art:  Filing, Not Publication, is Everything 

Irwin IP LLP on

The Federal Circuit recently addressed a deceptively straightforward question: does a published U.S. patent application qualify as prior art as of the application’s filing date in inter partes review (“IPR”) proceedings? ...more

Morgan Lewis

Federal Circuit Clarifies Secret Prior Art May Be Used in IPR Challenges

Morgan Lewis on

On January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd. clarified that inter partes review challenges may be “based upon published patent applications, and such published patent applications...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Clarifies What Is Deemed Prior Art in an IPR

On January 14, in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., the Federal Circuit held that a published patent application can be prior art in an inter partes review (IPR) based on the application’s filing date, not the...more

McDermott Will & Emery

A Lynk to the Past: Published Applications Are Prior Art as of Filing Date

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision finding challenged claims invalid based on a published patent application that, in an inter partes review (IPR) proceeding, was...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #3

Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more

Jones Day

When Is a Published Patent Application Prior Art in an IPR?

Jones Day on

On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more

WilmerHale

Federal Circuit’s Decision Confirms That Published Patent Applications Are Prior Art In IPRs As Of Their Filing Date

WilmerHale on

On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

Lynk Labs, Inc. v. Samsung Electronics Co. (Fed. Cir. 2025)

Published Patent Applications Are Prior Art as of the Filing Date, Not the Publication Date - Lynk Labs raises a simple question of statutory interpretation with surprisingly important ramifications:  in inter partes review,...more

McGuireWoods LLP

Federal Circuit: Published Patent Applications Available as Prior Art in IPRs as of Filing Date

McGuireWoods LLP on

The U.S. Court of Appeals for the Federal Circuit ruled on Jan. 14, 2025, in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., that published U.S. patent applications may continue to be used as prior art in inter partes...more

Wolf, Greenfield & Sacks, P.C.

Published Application Art at the PTAB: Lynk Labs v. Samsung Electronics, Co., Ltd.

In Lynk Labs, Inc., v. Samsung Electronics Co., Ltd., the Federal Circuit reinforced that patent applications may serve as prior art in IPR proceedings as of their filing date—even where those applications were not published...more

Axinn, Veltrop & Harkrider LLP

A POSA’s Motivation Is Not Required To Be the Same as the Inventor’s in Evaluating Obviousness

In its first precedential opinion of 2025, Honeywell v. 3G Licensing, No. 2023-1354, the Federal Circuit held that a person of ordinary skill in the art (POSA) needs not to have the same motivation as the inventor in an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025

Honeywell International Inc. v. 3G Licensing, S.A., Appeal Nos. 2023-1354, -1384, -1407 (Fed. Cir. Jan. 2, 2025) In this week’s Case of the Week, the Federal Circuit reversed an inter partes review finding of the Patent...more

Jones Day

District Court Not Persuaded System Prior Art Evades IPR Estoppel

Jones Day on

On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed...more

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

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

How Petitions Affect Reexamination and Reissue Prosecution and Clarification of a Dismissed Petition

This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where...more

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