News & Analysis as of

Patent Trial and Appeal Board Prior Art

Jones Day

Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

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In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

Goodwin

Issue 45: PTAB Trial Tracker

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In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more

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 “Booted” Where Images on Webpage Coupled with Evidence of Sales Deemed Insufficient to Establish Prior Art Status

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Patent Drawings Without Precise Measurements May Be Relied Upon as Prior Art, but Only for What They Clearly Show

The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation.  On...more

Jones Day

No Requirement to Raise All Arguments in Rehearing Request

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The Federal Circuit in Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024) (Lourie, Chen, and Cunningham), affirmed the PTAB’s determination that claims of Voice Tech Corp.’s (“Voice Tech”) U.S....more

A&O Shearman

Federal Circuit Provides Guidance On 35 U.S.C. § 102(b)(2)(B)’s Public Disclosure Exception To Prior Art

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In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C....more

McDermott Will & Emery

Private Sale Means Public Fail

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that a private sale of a product embodying the claimed invention did not qualify as a “public disclosure” under 35 U.S.C. §...more

McDermott Will & Emery

Unified Front: No Forfeiture by Failing to Raise Argument in Request for Rehearing

Addressing forfeiture of issues on appeal and sufficiency of the asserted prior art, the US Court of Appeals for the Federal Circuit upheld a Patent Trial & Appeal Board obviousness finding, explaining that a party does not...more

Dinsmore & Shohl LLP

Excluding Prior Art Based on Private Sales? Federal Circuit Says No.

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A private sale may start an inventor’s one-year filing clock, but it likely won’t save a patentee from an intervening prior art reference. On July 31, 2024, in a precedential decision, the U.S. Court of Appeals for the...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Permits Submission of Evidence Midstream to Bolster Public Accessibility of References Despite Objections

The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024

Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024) In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of...more

Jones Day

Director Provides Reminders For Obviousness Analysis

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On July 9, 2024, Director Vidal reversed and remanded a denial of institution of inter partes review (IPR) relating to three Spin Master patents. See Prime Time Toys LLC v. Spin Master, Inc., IPR Nos. 2023-01339, 2023-01348,...more

Knobbe Martens

A Private Sale Is Not Sufficient for Public Disclosure Under 35 USC 102(b)(2)(B)

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Before Dyk, Clevenger, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: An invention is not “publicly disclosed” under 35 USC 102(b)(2)(B) by the inventor’s private sale, even though a private sale may...more

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...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, June 2024: What’s Next for the Design Patent Obviousness Test; Federal Circuit Ruling on Printed Matter

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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: Design Patent Obviousness Test Thrown Out - The U.S. Court of Appeals...more

Venable LLP

PTAB Grants Institution of IPR Challenging The Johns Hopkins University Pembrolizumab Patent

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On June 13, 2024, the PTAB granted institution of IPR2024-00240 that Merck Sharp & Dohme, LLC (“Merck”) filed in November 2023 challenging claims 1-42 of The Johns Hopkins University’s (“JHU”) U.S. Patent No. 11,591,393 (“the...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

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Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

Jones Day

Shifting Burden Dooms Patent Owner

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In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

AEON Law

Patent Poetry: Federal Circuit Overturns Design Patent Obviousness Test

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The almost-full Federal Circuit (minus two judges) has overturned the Rosen-Durling test for determining design patent obviousness under 35 U.S.C. § 103. Under 35 U.S.C. § 103, A patent for a claimed invention may...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

King & Spalding

Federal Circuit Overrules Rosen-Durling Test For Design Patent Obviousness

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The Federal Circuit has overruled the long-standing Rosen-Durling test used to evaluate obviousness of design patents. LKQ Corp. v. GM Global Tech. Op. LLC, No. 2021-2348 (Fed. Cir. May 21, 2024). The court, which...more

Jones Day

Institution Denied For Lack of Sufficient Structure

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The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

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On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

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