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Patents Disclaimers

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

K&L Gates LLP

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

K&L Gates LLP on

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more

Wolf, Greenfield & Sacks, P.C.

USPTO Proposed Terminal Disclaimer Can Terminate Patents

The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP). Specifically, the newly proposed...more

WilmerHale

USPTO's Notice of Proposed Rulemaking on Terminal Disclaimer Practice

WilmerHale on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that proposes a rule regarding new requirements for terminal disclaimers filed to obviate nonstatutory...more

Goodwin

K-Fee Provides a Warning to Life Sciences Companies - What You Say in Foreign Prosecution May Affect Your U.S. Claim Scope

Goodwin on

On December 26, 2023, the United States Court of Appeals for the Federal Circuit issued its decision in K-Fee System GMBH v. Nespresso USA, Inc. While nominally a case related to coffee makers, its teachings are highly...more

McDermott Will & Emery

Espresso Yourself: When Prosecution History as a Whole Doesn’t Demonstrate Clear, Unmistakable Disclaimer

The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s claim construction and related summary judgment rulings after determining that the district court erred in construing a claim term by...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Federal Circuit Draws the Line of Disclaimers’ Binding Power

In the Federal Circuit’s recent decision of CUPP Computing AS v. Trend Micro Inc., the Court made the precedential holding that the Patent Trial and Appeal Board (“the Board”) is not bound by a party’s disclaimer in the very...more

WilmerHale

Federal Circuit Patent Watch: IPR disclaimers are binding in later proceedings but not in the proceeding in which it is made

WilmerHale on

Precedential Federal Circuit Opinions - 1.  VLSI TECHNOLOGY LLC v. INTEL CORPORATION [OPINION]  (2021-1826, 11/15/22) (Chen, Bryson, Hughes) - Bryson, J. Affirming in part, reversing in part, and remanding...more

Haug Partners LLP

Narrowing the Disclaimer Doctrine: Federal Circuit Cabins the Reach of Disclaimers in the IPR Context

Haug Partners LLP on

OVERVIEW - The United States Court of Appeals for the Federal Circuit recently affirmed three Inter Partes Review (IPR) final written decisions of the U.S. Patent Trial and Appeal Board (“the Board”) where the Board...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022

INVT SPE LLC v. Int’l Trade Comm’n, Appeal No. 2020-1903 (Fed. Cir. Aug. 31, 2022) - In its only precedential patent case last week, the Federal Circuit issued a lengthy opinion that revolved around claims that are drawn...more

Knobbe Martens

Sounding Off: Prosecution Disclaimer Requires Unambiguous Intrinsic Evidence

Knobbe Martens on

GENUINE ENABLING TECHNOLOGY LLC V. NINTENDO CO., LTD - Before Newman, Reyna, and Stoll. Appeal from the Western District of Washington. Summary: A finding of prosecution disclaimer must be supported by an unambiguous...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Regeneron Disclaims an Aflibercept Formulation Patent in Response to Celltrion PGR

On March 14, 2022, Regeneron Pharmaceuticals Inc. (“Regeneron”) filed a statutory disclaimer under 37 CFR § 1.321 disclaiming all claims of U.S. Patent No. 10,857,231 B2 (the “’231 patent”) in response to a petition for a...more

Sheppard Mullin Richter & Hampton LLP

Cementing Victory by Accepting Defeat: When Can a Patentee’s Infringement Disclaimer Moot an Appeal of an IPR Decision?

A recent Federal Circuit case, ABS Global, Inc., v. Cytonome/ST, LLC, answered the interesting question of whether a patentee’s infringement disclaimer can moot a challenger’s appeal of an inter partes review (“IPR”)...more

Fenwick & West LLP

Rescinding a Specification Disclaimer Introduces New Matter

Fenwick & West LLP on

A recent case before the U.S. Court of Appeals for the Federal Circuit serves as an important reminder of the distinction between a disclaimer introduced in the specification of a patent and a disclaimer introduced during...more

Manatt, Phelps & Phillips, LLP

Patent Held Invalid—Specification Disclaimer Prevented Claim to Earlier Priority Date

In Akeva L.L.C., v. Nike, Inc., the Federal Circuit held that a disclaimer in a specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment,...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Statutory Disclaimer Results in No Case or Controversy

The Federal Circuit ruled that statutory disclaimer terminates the case or controversy between the parties in an infringement suit as to those claims, and immediately deprives the district court of the authority to take...more

Knobbe Martens

Federal Circuit Review - May 2018

Knobbe Martens on

Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more

McDonnell Boehnen Hulbert & Berghoff LLP

News from Abroad -- Disclaimers: Door Remains Open for Undisclosed Disclaimers at European Patent Office

The Enlarged Board of Appeal has now released its written decision in respect of G 1/16 (T 0437/14). This decision resolves the question regarding which standard is to be applied to determine whether an "undisclosed...more

Jones Day

Disclaimers Double Standard Acknowledged by European Patent Office

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The Situation: A recent decision by the Enlarged Board of Appeal of the European Patent Office confirmed that a 2011 ruling dealing with disclosed disclaimers does not overrule its 2004 decision applying to undisclosed...more

Mintz - Intellectual Property Viewpoints

Improper Reliance on Informal “Opinion of Counsel” Part of Basis for Exceptional Case Award

In Drop Stop LLC v. Jian Qing Zhu et al, 2-16-cv-07916 (CACD January 22, 2018), the Central District of California granted Plaintiff’s motion to award attorney fees due to Defendants’ exceptional litigation tactics under 35...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Core Wireless v. LG affirms the denial of summary judgment as to unpatentable subject matter, ruling that the asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an...more

Adler Pollock & Sheehan P.C.

Insight on Estate Planning - Year End 2017

In This Issue: - When should you turn down an inheritance? - Addressing intellectual property requires careful estate planning - Year end is an ideal time to review your estate plan - Estate planning pitfall: You’re...more

Jones Day

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

Jones Day on

An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook,...more

McDermott Will & Emery

Disclaimer of All Challenged Claims Results in Denial of IPR Institution

McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) where the patent owner filed a statutory disclaimer of all claims challenged in the petition. Xilinx, Inc. v. Godo Kaisha IP Bridge 1,...more

Akin Gump Strauss Hauer & Feld LLP

Eastern District of Texas Judge Holds that Statements Made to PTAB Constitute Disclaimer

On September 9, 2017, an Eastern District of Texas magistrate judge issued a report and recommendation holding that a plaintiff was estopped from asserting its patent infringement claims because statements made in response to...more

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