New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
On May 21, 2024, the Federal Circuit issued an en banc decision (full court, instead of the typical three-judge panel) in LKQ Corp. et al. v. GM Global Technology Operations LLC, overturning the long-standing obviousness test...more
On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more
In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more
Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more
On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
Smith & Nephew petitioned for IPR of Arthrex’s ’907 patent, which claims a surgical device with an “eyelet” through which a suture is threaded. Smith & Nephew argued in relevant part that certain claims were anticipated by a...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
The Federal Circuit has held that a transcription error in a prior art document wouldn’t have been relied on by a person of ordinary skill in the art (POSITA) and thus couldn’t be used to prove obviousness....more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
[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
Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more
Last month, in Qualcomm Inc. v. Intel Corp., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on six inter partes review (“IPR”) decisions that...more
While much has been written about the effect of the post-grant review provisions of the Leahy-Smith America Invents Act (2012) in invalidating U.S. patents, the change in the law most responsible for how easy it has become to...more
The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
Last week, the Federal Circuit overturned an obviousness determination in an inter partes review by the Patent Trial and Appeal Board in OSI Pharmaceuticals LLC v. Apotex Inc. The Court also reaffirmed its holdings in...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision finding that the America Invents Act (AIA) is constitutionally sound as applied to patents issuing on applications filed...more
Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more
PATENT CASE OF THE WEEK - Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., Appeal Nos. 2017-2078, -2134 (Fed. Cir. Sept. 10, 2018) The Federal Circuit affirmed the district court’s ruling following a bench trial,...more
Applications in Internet Time, LLC v. RPX Corp., Appeal Nos. 2017-1698, et al. (Fed. Cir. July 9, 2018) (unsealed July 24, 2018) In a lengthy decision on an issue of first impression, the Federal Circuit addressed the...more
Addressing the written description requirement under 35 USC § 112, the US Court of Appeals for the Federal Circuit found that an international patent application had sufficient written description to act as a priority...more
PATENT CASE OF THE WEEK - SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018) - In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule...more