News & Analysis as of

Patent Applications Patent Trial and Appeal Board Written Descriptions

Fitch, Even, Tabin & Flannery LLP

Priority Denied, Patent Derailed: When One Filing Cancels Out the Other

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

ArentFox Schiff

Designers Beware: Prior Utility Patent Lacking Written Support Can Anticipate Later-Filed Design Patents

ArentFox Schiff on

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

McDermott Will & Emery

Take That Conception Out of the Oven – It’s CRISPR Even If the Cook Doesn’t Know

McDermott Will & Emery on

Addressing the distinction between conception and reduction to practice and the requirement for written description in the unpredictable arts, the US Court of Appeals for the Federal Circuit explained that proof of conception...more

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

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more

Goodwin

The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support...

Goodwin on

On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US...more

A&O Shearman

Federal Circuit Clarifies Requirements For A Prior Art Reference’s Entitlement To The Filing Date Of A Provisional Application To...

A&O Shearman on

On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision of the U.S. Patent Trial and Appeal Board (the “Board”) that a published patent application...more

Jones Day

Institution Denied Based On Written Description in “Alternative Embodiments”

Jones Day on

On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10....more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023

Regents of the University of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168 (Fed. Cir. Mar. 6, 2023) The Federal Circuit’s only precedential patent opinion this week focuses on the written description requirement...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th...

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

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

McDonnell Boehnen Hulbert & Berghoff LLP

Junior Party Broad Files Reply to Sigma-Aldrich Opposition to Broad Contingent Motion No. 2

On December 3rd, Junior Party the Broad Institute, Harvard University, and MIT (collectively, Broad) filed its Contingent Preliminary Motion No. 2 in Interference No. 106,133 (which names Sigma-Aldrich as Senior Party),...more

American Conference Institute (ACI)

[Event] 20th Advanced Summit on Life Sciences Patents - June 2nd - 3rd, New York, NY

ACI’s Advanced Summit on Life Sciences Patents is back in person on June 2–3 in New York City. Our reimagined 2022 conference will provide practical insights on how to implement bullet-proof patent prosecution tactics,...more

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

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Finds Written Description for a Claimed Range Not Met by Specific Examples Within the Range

In a recent decision issued in Indivior UK Limited v. Dr. Reddy’s Laboratories, the Federal Circuit affirmed a decision from the PTAB that a limitation to range of polymer weight percentages lacked written description support...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After the Fact

The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. Below we provide our usual weekly statistics and our case of the week—our...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2021 #2

Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeal Nos. 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021) - Our Case of the Week this week focuses on the written description requirement when the patent claims a range. The...more

McDonnell Boehnen Hulbert & Berghoff LLP

Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A. (Fed. Cir. 2021)

The Leahy-Smith America Invents Act prescribed two very different post-grant review proceedings in U.S. patent law. The first, post-grant review (PGR), had some analogies with European opposition practice, in that petitions...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

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

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Sets Preliminary Motions in Broad v. ToolGen Interference

On March 1st, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued its Order on the Preliminary Motions Lists submitted by Junior Party The Broad Institute, the Massachusetts Institute of...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Sets Preliminary Motions in CVC v. ToolGen Interference

On March 1st, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued its Order on the Preliminary Motions Lists submitted by Junior Party University of California/Berkeley, University of Vienna, and...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Honeywell International Inc. v. Arkema Inc., 939 F.3d 1345...

Honeywell owns U.S. Patent 9,157,017, which claims automotive air-conditioning systems. The application to the ’017 patent had originally described and recited claims for flouroalkane compounds for use in refrigeration...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

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