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Patent Applications Claim Construction Obviousness

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

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

Lathrop GPM on

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

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

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

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

2022 Design Patents Year in Review: Analysis & Trends

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

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

PTAB Strategies and Insights Newsletter: May 2022

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

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

2021 PTAB Year in Review: Analysis & Trends

[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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

McDonnell Boehnen Hulbert & Berghoff LLP

On the Nature of Prior Art in the 35 U.S.C. § 101 Inquiry

Diamond v. Diehr, decided by the Supreme Court in 1981, seemed to establish a bedrock principle of statutory construction for patent law.  The Court stated that "[t]he 'novelty' of any element or steps in a process, or even...more

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

In Qualcomm v. Intel, Federal Circuit Defends Procedural Rights Before the PTAB

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: In re Google Tech. Holdings LLC, 980 F.3d 858...

Google applied for a patent on video-on-demand systems. The Patent Trial and Appeal Board affirmed the examiner’s rejection of the claims as obvious, stating that Google’s responses to the examiner’s rejections were...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

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

Claim Construction Arguments in Appeal Forfeited if Not Raised Before the Board

In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments.  Ultimately, the court affirmed the...more

Knobbe Martens

Claim Construction Arguments Not Made to the PTAB Are Forfeited on Appeal

Knobbe Martens on

IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC - Before Taranto, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Claim construction arguments are forfeited if not raised before the PTAB. The PTAB...more

Knobbe Martens

Federal Circuit Review - July 2020

Knobbe Martens on

Unconstitutionally Appointed Judges Cannot Decide Ex Parte Appeals - In In Re Boloro Global Limited, Appeal No. 19-2349, When administrative patent judges are unconstitutionally appointed, their decisions in ex...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

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

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

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

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

Reverse or Remand: What is the proper remedy on appeal where the Board fails to carry its burden?

Is there a growing split in the Federal Circuit on the proper remedy where the Patent Trial and Appeal Board (“Board”) fails to carry its burden? The recent precedential decision of In re Hodges, __ F.3d __, 2018 WL 817248...more

Robins Kaplan LLP

Inter Partes Review: Validity Before the PTAB

Robins Kaplan LLP on

The PTAB is beginning to develop a reputation as being harsh towards patent owners and the validity of their patents. Why have patent owners struggled so much before the PTAB? Attorneys Seth Northrop and Cyrus Morton discuss...more

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