News & Analysis as of

Patent Applications Indefiniteness Patent Trial and Appeal Board

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – January 2025

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

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

PTAB Strategies and Insights Newsletter - March 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

Knobbe Martens

Federal Circuit Review - October 2019

Knobbe Martens on

The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

Morgan Lewis

Federal Circuit: 2D Depiction of 3D Article Can Satisfy Written Description in a Design Patent

Morgan Lewis on

The recent ruling in In re Maatita means that a two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness requirements for a design patent....more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

McDermott Will & Emery

PTO Uses Different Approaches “Configured” to Assess Indefiniteness

McDermott Will & Emery on

In a precedential decision, the Patent Trial and Appeal Board (PTAB) upheld the longstanding US Patent and Trademark Office (PTO) practice of using a lower threshold to assess claim indefiniteness during prosecution relative...more

Foley & Lardner LLP

Federal Circuit Keeps Burden of Patent Clarity on Applicants on Issues of Patent Indefiniteness

Foley & Lardner LLP on

In In re Packard, the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decision upholding the rejection of Packard’s claims for indefiniteness. The per curiam decision approaches the issue from the...more

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