News & Analysis as of

Patent Applications Prior Art Patent Trial and Appeal Board

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

by Knobbe Martens on

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Oracle America, Inc. v. Google LLC, Appeal No. 2017-1118, -1202 (Fed. Cir. 2018) - In an appeal from a jury trial, the Federal Circuit reversed the District Court’s decision denying Oracle’s motion for JMOL and remanded...more

Knee Brace Patent Application Gets a Leg Up

by McDermott Will & Emery on

Finding that the Patent Trial and Appeal Board (PTAB) erred in rejecting patent claims after improperly construing an apparatus claim element by ignoring what it deemed to be a recited method step, the US Court of Appeals for...more

Federal Circuit Provides Guidance on Obviousness of a Claimed Range of Values

by Jones Day on

Patent applicants often draft claims to cover various ranges of physical or chemical characteristics. Of primary concern during prosecution are prior art documents that disclose similar, but not overlapping, ranges. In In re...more

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

PTAB Reversed For Giving Process Step In Product Claims No Weight

by Jones Day on

Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more

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

Fresh From the Bench: Latest Federal Circuit Court Cases

Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more

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

No Rehearing Because of Hindsight Declaring

The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its...more

Berkeley Files Opening Brief in CRISPR Appeal

The University of California/Berkeley filed its opening brief to the Federal Circuit last week, asking that Court to overturn the Patent Trial and Appeal Board's decision that there was no interference-in-fact between...more

Prior Art that Must be Distorted from its Obvious Design Does Not Anticipate

In In re Chudik, [2016-1817] (March 27, 2017), the Federal Circuit reversed the PTAB’s determination that claims 1, 15, 18, and 33–40 of U.S. Patent Application 11/525,631 on an implant for shoulder replacement surgery were...more

AliceStorm Update February 2017

by Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

Not Intuitively Obvious: Federal Circuit Remands for Explicit Rational to Combine

by McDermott Will & Emery on

In a rebuke of the Patent Trial and Appeal Board’s (PTAB’s) obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a PTAB obviousness determination, explaining that the PTAB failed to...more

PTAB Terminates Interference Involving Revolutionary Gene Modification Technology

On February 15, 2017, the Patent Trial and Appeal Board (PTAB) terminated a patent interference between the Broad Institute and the University of California, finding the parties’ respective claims to CRISPR-Cas9 systems and...more

Federal Circuit Looks to Provisional Patent Application in Determining Claim Scope

by BakerHostetler on

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ...more

Evidence to Negate PGR Eligibility Based on Filing Date May Not Be Sufficient to Establish Filing Date for Purposes of Antedating...

by McDermott Will & Emery on

Addressing for the first time the sufficiency of evidence needed to establish an earlier priority date for purposes of post-grant review (PGR) eligibility versus the evidence required to antedate a prior art reference, the...more

In re Nuvasive (Fed. Cir. 2016)

In a precedential decision the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by...more

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., No. 15-2043 (Fed. Cir. Nov. 15, 2016), the Federal Circuit found the diligence standard the PTAB applied in an IPR “too exacting,” vacating the Board’s decision...more

Hard to Reverse Adverse PTAB Rulings Under Substantial Evidence Standard

by McDermott Will & Emery on

Over a vigorous dissent, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision affirming rejection of all pending claims of a patent as being obvious, as supported...more

Yeda Research and Development Co. v. Abbott GmbH & Co. (Fed. Cir. 2016)

Before the Supreme Court's recent forays into the topic of subject matter eligibility in patent law, the most contentious line of cases (from the Federal Circuit) concerned the written description requirement of Section 112. ...more

PTAB Denies Priority Claim, Has No Affinity for “Antibody Rule”

by McDermott Will & Emery on

Addressing enablement and written description issues in the context of a priority challenge, the Patent Trial and Appeal Board (PTAB or Board) found that the challenged claims were not entitled to the benefit of the parent...more

Losing Competing Property Not A Teaching Away

by Foley & Lardner LLP on

In In re Urbanski, the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding the claims of Urbanski’s patent application obvious. Urbanski had argued that the cited references taught...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

Morsa II: Admissions Enable Prior Art

by Foley & Lardner LLP on

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the...more

29 Results
|
View per page
Page: of 2
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.