News & Analysis as of

Patent Litigation Patent Invalidity Patent Applications

DLA Piper

Federal Circuit Refines Obviousness Framework for Drug and Biologic Dosing Regimens

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The United States Court of Appeals for the Federal Circuit recently affirmed a district court ruling that a pharmaceutical dosing claim limitation was unpatentable due to obviousness-type double patenting. The court found...more

A&O Shearman

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

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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

Saul Ewing LLP

What Intellectual Property Owners Need to Know Today About Obviousness-Type Double Patenting

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What You Need to Know: • Instead of filing multiple applications claiming different aspects of an invention but not sharing a single priority chain, patentees should strive to file highly comprehensive applications that...more

Miller Canfield

A New Alice Plot Twist - Can a Composition of Matter Be an Abstract Idea?

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The patent world tends to think that the Supreme Court’s framework in Alice is a template for determining the eligibility of software and business method inventions. Under 35 U.S.C. § 101, abstract ideas are not eligible for...more

Amundsen Davis LLC

Preserving Patent Rights: Impact of Public Use on Patenting

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For a business planning to market a product that incorporates an invention, having an enforceable patent to protect the invention is often desirable. Two recent federal circuit cases reiterate what many patent holders and...more

Baker Botts L.L.P.

Intellectual Property Report March 2025

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This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation

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This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

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

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

Knobbe Martens

Federal Circuit Review | January 2025

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In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as...more

Dorsey & Whitney LLP

When Is a Published Patent Application Prior Art?

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In a precedential opinion entered on January 14, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”) invalidating claims of a patent on...more

Irwin IP LLP

Published Patent Applications as Prior Art:  Filing, Not Publication, is Everything 

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The Federal Circuit recently addressed a deceptively straightforward question: does a published U.S. patent application qualify as prior art as of the application’s filing date in inter partes review (“IPR”) proceedings? ...more

McDermott Will & Emery

A Lynk to the Past: Published Applications Are Prior Art as of Filing Date

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision finding challenged claims invalid based on a published patent application that, in an inter partes review (IPR) proceeding, was...more

Jones Day

When Is a Published Patent Application Prior Art in an IPR?

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On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more

WilmerHale

Federal Circuit’s Decision Confirms That Published Patent Applications Are Prior Art In IPRs As Of Their Filing Date

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On January 14, 2025, the Court of Appeals for the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir.), affirmed the Patent Trial and Appeal Board’s ruling that “a published patent...more

Wolf, Greenfield & Sacks, P.C.

Published Application Art at the PTAB: Lynk Labs v. Samsung Electronics, Co., Ltd.

In Lynk Labs, Inc., v. Samsung Electronics Co., Ltd., the Federal Circuit reinforced that patent applications may serve as prior art in IPR proceedings as of their filing date—even where those applications were not published...more

Axinn, Veltrop & Harkrider LLP

A POSA’s Motivation Is Not Required To Be the Same as the Inventor’s in Evaluating Obviousness

In its first precedential opinion of 2025, Honeywell v. 3G Licensing, No. 2023-1354, the Federal Circuit held that a person of ordinary skill in the art (POSA) needs not to have the same motivation as the inventor in an...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Emphasizes Role of Filing Dates, Reversing Obviousness-Type Double Patenting Invalidation

In Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. August 13, 2024), the Federal Circuit reversed the District Court of Delaware’s invalidity determination of certain claims of U.S. Patent No....more

Patterson Belknap Webb & Tyler LLP

One Down But One to Go: Judge McMahon Concludes Asserted Patent is Not Unenforceable Through Infectious Unenforceability

On February 23, 2024, Judge McMahon (S.D.N.Y.) entered findings of fact and conclusions of law pertaining to issues relating to Defendant Lutron Electronics Co. (“Lutron”)’s defenses of invalidity and unenforceability of U.S....more

Morris, Manning & Martin, LLP

Could your patent be invalid if your attorney uses AI in the drafting process?

The Federal Circuit held in Thaler v. Vidal that an “inventor” must be a human.  During the patent drafting process, the human inventors meet with the patent attorney to describe the invention.  In this meeting, the patent...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

Sheppard Mullin Richter & Hampton LLP

UCB, Inc. v. Actavis Laboratories UT, Inc. No. 2021-1924, (Fed. Cir. Apr. 12, 2023)

This case addresses the legal framework for determining whether prior art anticipates a claimed range. The appropriate legal framework applies a different test depending on whether the prior art discloses a point within the...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

Procopio, Cory, Hargreaves & Savitch LLP

[Webinar] Is Your Life Sciences Patent Enabled? - March 14th, 12:00 pm PT

U.S. Supreme Court Will Decide This Year - In this year’s foray into patent law, the Supreme Court will decide whether Amgen’s patent that claims antibodies by functional antigen binding and does not disclose the full...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

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