News & Analysis as of

Patent Applications Claim Construction

Wilson Sonsini Goodrich & Rosati

Method of Treatment Claim’s Limiting Preamble Must Satisfy the Written Description Requirement

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

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more

Holland & Knight LLP

Federal Circuit: Machine Learning Patents Fail Section 101 Patent Eligibility Challenge

Holland & Knight LLP on

The Federal Circuit's recent decision in Recentive Analytics, Inc. v. Fox Corp. (April 18, 2025) has garnered a lot of attention. This is not surprising: It hits on hot topics such as machine learning, artificial intelligence...more

Miller Canfield

Jepson Claims No Substitute for Written Description in Patents

Miller Canfield on

Federal Circuit Holds That the Preamble of Jepson-Style Claims Must Be Supported by an Adequate Written Description - U.S. patent claims have a preamble, and, in most cases, the preamble is not limiting. Jepson-style...more

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

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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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

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

Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

Baker Botts L.L.P. on

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

Baker Botts L.L.P.

The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation

Baker Botts L.L.P. on

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

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

Mintz - Intellectual Property Viewpoints

Avoiding the Provisional Application Filing Pitfall of Narrowed Claim Interpretation

Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent and Trademark Office (USPTO) filing...more

Smart & Biggar

Canadian patent law 2024: a year in review

Smart & Biggar on

2024 was an active year in Canadian patent law, with the Federal Court issuing several decisions on the merits regarding invalidity and/or infringement. The courts also considered issues of the regulation of patent agents,...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

Knobbe Martens

Deleted Definition “Highly Significant” for Claim Construction

Knobbe Martens on

DDR HOLDINGS, LLC V. PRICELINE.COM LLC, BOOKING.COM B.V. - Before Chen, Mayer, and Cunningham.  Appeal from the United States District Court for the Northern District of Delaware. Summary: Deleting a definition provided in...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

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

Four Pitfalls to Understand in Reissues

Takeaways: -Not all patent errors are correctible via Reissue. - Restriction practice applies to Reissue applications. 1. Non-Elected Invention Recapture: A reissue application cannot add claims directed to a...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Womble Bond Dickinson

USPTO Addresses Ambiguities in Means-Plus-Function, Step-Plus-Function Claims

Womble Bond Dickinson on

United States Patent and Trademark Office (USPTO) officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means-plus-function and step-plus-function limitations. ...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2024

Freshub, Inc. v. Amazon.com, Inc., Appeal Nos. 2022-1391, -1425 (Fed. Cir. Feb. 26, 2024) In the Court’s only precedential patent opinion this week, the Court affirmed a jury finding that use of Amazon’s “Alexa” products...more

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

2023 Design Patents Year in Review: Analysis & Trends: U.S. District Courts: Significant Design Patent Cases on District Court...

2023 was another busy year for district court decisions! There were patent- and case-dispositive design patent decisions across a range of venues and at a range of case postures, including claim construction rulings, summary...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2024

K-Fee System GmbH v. Nespresso USA, Inc., Appeal No. 2022-2042 (Fed. Cir. Dec. 26, 2023) In an appeal from a district court judgment of noninfringement, the Federal Circuit reversed the underlying claim construction...more

Foley Hoag LLP

Semiconductor Technology Pilot Program Provides Opportunity to Accelerate Patent Examination

Foley Hoag LLP on

The Chips Act seeks to jump-start semiconductor development in the United States. Last week, the Patent Office has promulgated the Semiconductor Technology Pilot Program (STPP) to further the goals of the Chips Act....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2023

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

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

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

Buckingham, Doolittle & Burroughs, LLC

Use Open Families to Combat Design-Arounds

A perennial challenge in patenting is to both cover your product and block design-arounds. It is understandably frustrating to incur the expense and disclosure requirements of the patent process only to find that a...more

Sheppard Mullin Richter & Hampton LLP

Trinity Info Media, LLC, fka Trinity Intel Media, LLC, v. Covalent, Inc., No. 2022-1308 (Fed. Cir. July 14, 2023) (“Opinion”)

This case addresses whether patents relating to methods and systems for connecting users based on their answers to polling questions claim patentable subject matter under 35 U.S.C. § 101...more

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