News & Analysis as of

Patent Applications Prior Art Patent Trial and Appeal Board

Jones Day

Private Sale Not Necessarily Public Disclosure Under Section 102(b)(2)(B)

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In Sanho Corp. v. Kaijet Technology International Limited, Inc, the Federal Circuit affirmed the PTAB’s decision finding obvious all challenged claims of the ‘429 patent, which relates to a device that provides ports for...more

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

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In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Jones Day

Conception and Reduction to Practice Dates Matter

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In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...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

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

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What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...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

Akin Gump Strauss Hauer & Feld LLP

Patentee’s Own Clinical Trial Renders Unpatentable Patent Claims Directed to Antibody Treatment

In a final written decision of an inter partes review proceeding, the Patent Trial and Appeal Board found all 12 claims of a challenged patent unpatentable as either anticipated or obvious. Each ground of unpatentability...more

Jones Day

Explanations, Not Bare Citations, Needed To Establish Prior Art Date

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Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and Appeal Board...more

Sheppard Mullin Richter & Hampton LLP

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

This case addresses obviousness under 35 U.S.C. § 103 in relation to a method of increasing prostacyclin release to reduce hypertension in a patient. In particular, this case discusses issues relating to motivation to...more

Sheppard Mullin Richter & Hampton LLP

Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc., v. Modernatx, Inc., FKA Moderna Therapeutics, Inc. No. 2020-1183...

This case addresses the legal standard for inherent anticipation. The ’127 patent is directed to an invention that provides stable nucleic acid-lipid particles (“SNALP”) that have non-lamellar structure and “comprise a...more

MoFo Life Sciences

Obviousness In Drug Combinations – Unexpected Results Vs. Unexpected Mechanisms Of Action

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Ascertaining the differences between prior art and claims at issue requires interpreting the claim language and considering both the invention and the prior art references as a whole. The Supreme Court emphasized “the need...more

Foley & Lardner LLP

USPTO Provides Updated Guidance on the Use of Applicant Admitted Prior Art

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U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently altered a decision by the Patent Trial and Appeal Board (PTAB) to address the use of applicant admitted prior art (AAPA) in inter partes review (IPR)...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

McDonnell Boehnen Hulbert & Berghoff LLP

Arbutus Biopharma Corp. v. ModernaTx, Inc. (Fed. Cir. 2023)

"This application claims priority to [properly identified earlier-filed application, the disclosure of which is expressly incorporated herein in its entirety" is a phrase commonly found in patents and patent applications as...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Google LLC v. IPA Technologies Inc., 34 F.4th 1081...

Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...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.

[Webinar] 2022 PTAB Year in Review: Analysis and Trends - February 28th, 1:00 pm - 2:00 pm EST

Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...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

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

Jones Day

Proof of Prior Art Requires Sufficient Corroboration By Credible Evidence

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Proof of prior art is an issue that often arises in inter partes and post grant review proceedings before the PTAB. In a recent decision, the Federal Circuit explained the quantum of proof that is required to establish prior...more

McDermott Will & Emery

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

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The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness...more

Haug Partners LLP

Mylan Failed to “Immediately Envisage” the Compounds in Merck’s Patent Covering Januvia

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In Mylan Pharm. Inc. v. Merck Sharp & Dohme Corp., the Federal Circuit considered whether prior disclosure of a genus of compounds and their pharmaceutically acceptable salts was sufficient to anticipate, under 35 U.S.C....more

Kilpatrick

3 Key Takeaways | Third party Prior Art Submissions at USPTO

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Kilpatrick Townsend Partner Nesli Doran-Civan recently spoke about Third-party Prior Art Submissions at USPTO. Here are the 3 key takeaways from her presentation....more

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