Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
The Federal Circuit issued a precedential opinion in In re: Xencor, Inc.concerning written support for Jepson claims. The decision affirms the decision of the Appeals Review Panel (ARP) of the USPTO, which held that the...more
The proliferation of artificial intelligence (“AI”) presents complex challenges for intellectual property, especially within patent law. In particular, the obviousness inquiry under 35 U.S.C. § 103 may be susceptible to...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more
On April 22, 2025, the Federal Circuit issued a decision In re: Bonnie Iris McDonald Floyd that underscores a critical and often overlooked risk in design patent prosecution: relying on a utility patent application for...more
In its recent In re Floyd opinion, the US Court of Appeals for the Federal Circuit upheld a decision by Patent Trial and Appeal Board (PTAB) to reject a design applicant’s priority claim to an earlier utility filing for...more
On March 13, 2025, the U.S. Court of Appeals for the Federal Circuit issued a decision in the case of In Re: Xencor, Inc. In this Appeal from the Appeals Review Panel of the Patent Trial and Appeal Board (ARP), with regard to...more
Requesters should make sure to double cite to non-provisional and provisional if they require a provisional filing date for prior art....more
On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to...more
The United States Court of Appeals for the Federal Circuit recently affirmed a district court ruling that a pharmaceutical dosing claim limitation was unpatentable due to obviousness-type double patenting. The court found...more
The US Court of Appeals for the Federal Circuit established a more demanding test for determining whether a published patent application claiming priority to a provisional application is considered prior art under pre-America...more
Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more
In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more
This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more
After creating something of a frisson due to the apprehension that the Federal Circuit might be convinced to re-evaluate whether it was a necessary element for establishing obviousness for the skilled artisan to have had a...more
This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more
Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that the Federal Circuit always says never, patent publications...more
While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more
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
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
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
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
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
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
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