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Inter Partes Review (IPR) Proceeding Provisional Applications Patent Litigation

Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Sheppard Mullin Richter & Hampton LLP

Petitioner Failed to Establish Standing in IPR Appeal

Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC addresses whether an IPR petitioner can assert Article III standing on appeal based on potential infringement liability and potential preclusive effects on its...more

McDermott Will & Emery

Distinguishing Drinkware—Provisional Priority Determined Differently in Pre- and Post-AIA Patents

McDermott Will & Emery on

In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more

Jones Day

Provisional Describes “Incompressible Solid” Despite Disclosure Of “Little” Compression

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In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v....more

Akin Gump Strauss Hauer & Feld LLP

Priority Dispute Is Not Carte Blanche to Challenge Same Patent with Multiple IPR Petitions

A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims. The...more

Foley & Lardner LLP

Federal Circuit Scrutinizes Written Description In Provisional Application

Foley & Lardner LLP on

Provisional applications tempt stakeholders with the possibility of securing a filing date on an expedited basis and limited budget, but the value of that filing date will depend on its ability to serve as a valid priority...more

Foley & Lardner LLP

PTAB Institutes Kyle Bass IPRs Against Juxtapid Patents

Foley & Lardner LLP on

The USPTO Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) proceedings filed by Kyle Bass against two of the five Juxtapid patents listed in the Orange Book. Two of the cited references may...more

Foley & Lardner LLP

Denying Prior Art Status In PTAB Proceedings: Petitioner's Failure to Show Section 112 Support in Priority Applications May Be...

Foley & Lardner LLP on

Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

McDermott Will & Emery

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

McDermott Will & Emery on

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

McDonnell Boehnen Hulbert & Berghoff LLP

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

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