News & Analysis as of

Patent Applications Prior Art Patent Trial and Appeal Board

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

Patentee’s Admission that Certain Technology Is Prior Art, Without More, Is Not a Ground of Unpatentability in IPR Petition -...

by McDermott Will & Emery on

Addressing the statutory requirements for prior art in an inter partes review (IPR) petition, the Patent Trial and Appeal Board (PTAB or Board) dismissed the IPR petition, finding that written admissions in the challenged...more

Progressive Obtains No Insurance at Federal Circuit - Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co.

by McDermott Will & Emery on

In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit affirmed several formal written decisions of the Patent Trial and Appeal Board (PTAB or Board) invalidating the appellant’s patents, while also...more

In re Steed (Fed. Cir. 2015) - Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence

Thomas Steed, Sourav Bhattacharya, and Sandeep Seshadrijois (collectively "Steed") filed a patent application entitled "Web-Integrated On-Line Financial Database System and Method for Debt Recovery," on April 6, 2004, with...more

Doubling Down on Idle Free

In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free...more

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