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Patents Final Written Decisions Inventions

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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

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The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...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

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

Jones Day

Federal Circuit Slices PTAB’s Printed Publication Finding

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Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to...more

McDermott Will & Emery

Consider Invention When Assessing Support for Claimed Range

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The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written...more

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

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2024

Univ. of South Florida Bd. of Trustees v. United States, Appeal No. 2022-2248 (Fed. Cir. Feb. 9, 2024) In this week’s Case of the Week, the Federal Circuit examined the scope of a provision of the Bayh-Dole Act of 1980 (35...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950 (Fed....

Axonics petitioned for IPR of two patents owned by Medtronic. The challenged claims relate to a neurostimulation lead and a method for implanting and anchoring the lead. The patents’ “Field of the Invention” section states...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Weighs in on Relevance of Primary Reference’s Intended Purpose to a POSITA’s Motivation to Combine

In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Innovations S.A.R.L., the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary reference when evaluating...more

Jones Day

Patent Owner Unable to Change Inventorship During Remand

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At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date...more

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

PTAB Strategies and Insights Newsletter - May 2023

The PTAB Strategies and Insights newsletter provides quarterly updates and insights into how best to handle PTAB trial proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023

Roku, Inc. v. Universal Electronics, Inc., Appeal No. 2022-1058 (Fed. Cir. Mar. 31, 2023) In this week’s Case of the Week, the Federal Circuit affirmed the U.S. Patent Trial and Appeal Board’s (PTAB’s) final written...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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2021

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In This Issue - Assignor Estoppel: When Are Inventors Allowed to Attack Their Own Inventions? In Minerva v. Hologic, the Supreme Court recently upheld the patent-law doctrine of assignor estoppel—which bars the...more

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

PTAB Strategies and Insights - May 2021: Can Forum Selection Clauses Prohibit IPRs?

New Vision Gamingi touches on an interesting forum-selection issue currently before the Federal Circuit in at least one other case. The issue is the enforceability of a forum-selection clause in an agreement between parties...more

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

PTAB Strategies and Insights - May 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

PTAB Strategies and Insights - November 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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