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Pillsbury Winthrop Shaw Pittman LLP

Lashify v ITC: The Federal Circuit Redefines the Domestic Industry Requirement

The Federal Circuit has overturned the U.S. International Trade Commission’s longstanding interpretation of section 337(a)(3)(B). Complainant Lashify, Inc. appealed an adverse decision by the U.S. International Trade...more

Alston & Bird

Patent Case Summaries | Week Ending April 4, 2025

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In re: Forest, No. 2023-1178 (Fed. Cir. (PTAB) Apr. 3, 2025). Opinion by Chen, joined by Taranto and Schall.  In 2016, an inventor filed a patent application that claimed priority to an application filed in 1995. The Patent...more

Sheppard Mullin Richter & Hampton LLP

Don’t Get Lazy, Timely Complete Your Arguments

This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness.  Gesture Technology Partners, LLC is the owner of U.S....more

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

Understanding the PTAB’s Recent Informative Decision: Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR)...more

McDermott Will & Emery

A Patent Without a Pulse: Provisional Rights Don’t Outlive the Patent

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Limits Reliance on Provisional Priority Date Under Section 102(e)(1)

On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re Forest

In re Forest, Appeal No. 2023-1178 (Fed. Cir. Apr. 3, 2025) In an appeal from a Patent Office decision denying a patent that would have been expired upon issuance, the Federal Circuit dismissed. Applicant Forest had filed...more

McDonnell Boehnen Hulbert & Berghoff LLP

Recor Medical, Inc. v. Medtronic Ireland Mfg. (Fed. Cir. 2025)

The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims,...more

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

Hatch-Waxman Requires Patent Term Extension for Reissued Patents To Be Based on Original Patent

The Federal Circuit held in Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., 23-2254 that a reissued patent receives patent term extension (PTE) based on the issue date of the original patent, not the reissue patent,...more

McDermott Will & Emery

Detour Ahead: New Approach to Assessing Prior Art Rejections Under § 102(e)

The US Court of Appeals for the Federal Circuit established a more demanding test for determining whether a published patent application claiming priority to a provisional application is considered prior art under pre-America...more

Goodwin

The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support...

Goodwin on

On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US...more

Irwin IP LLP

Federal Circuit Finds Against Generics Where Hatch-Waxman's Full Five-Year Extension Fixes Delay For Pharmaceutical FDA-Review  

Irwin IP LLP on

Merck Sharp & Dohm B.V. v. Aurobindo Pharma USA, Inc. et al (Fed. Cir. March 13, 2025) - The Hatch-Waxman Act seeks to strike a balance in the pharmaceutical industry by incentivizing drugs makers to develop innovative...more

Knobbe Martens

IPR Standing Arguments Not Presented to the Board Are Forfeited

Knobbe Martens on

APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC - Before Moore, Prost, and Stoll. Appeal from the Patent Trial And Appeal Board. A patent owner forfeits its argument that an IPR petitioner lacks standing under 35 U.S.C....more

Quarles & Brady LLP

Federal Circuit Rules Sales and Marketing Expenses for Foreign-Made Products May Satisfy ITC Domestic Industry Requirement

Quarles & Brady LLP on

In a precedential decision issued on March 5, the Federal Circuit held that the International Trade Commission (“ITC”) must consider various domestic expenditures related to foreign-made products in determining whether the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Aurobindo v. Merck Sharp and Dohme -- Oral Argument

The Federal Circuit heard oral argument in Auribundo's appeal of the district court's decision in favor of plaintiff Merck, in a case captioned In re Sugammadex (alternatively, Aurobindo v. Merck Sharp and Dohme). The issue...more

Haug Partners LLP

The Sole Meaning of “Solely”: Supreme Court Denies Certiorari on Edward Life Sciences v. Meril Life Sciences Pvt. Ltd. and Permits...

Haug Partners LLP on

This month the Supreme Court denied certiorari on Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., and in doing so, seemingly indicated its support for a broad interpretation of the Hatch-Waxman safe harbor...more

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...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

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

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

Amundsen Davis LLC

Is the Patent Eligibility Restoration Act a Good Thing? Probably Not.

Amundsen Davis LLC on

On September 6, 2024, House Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the Patent Eligibility Restoration Act (PERA) to Congress. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced an...more

Erise IP

Eye on IPRs, July 2024: Impact of the End of Chevron on USPTO; PTAB Filings Are Up; and More

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review (IPR) cases and news to bring you the stories that you should know about: What Does the End of Chevron Deference Mean for the USPTO? In June, the...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Supreme Court Sidesteps America's Patent Eligibility Crisis

In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...more

Venable LLP

[Webinar] Preparing Your Company for Unpredictable, Inconsistent, and Volatile IP Disputes - April 27th, 1:00 pm - 2:30 pm ET

Venable LLP on

Join Venable for this session covering the landscape of IP disputes that has changed markedly over the past 10 years. Coupled with the volume of litigated IP disputes and the massive investment in patent litigation, companies...more

Proskauer - The Patent Playbook

Update on Artificial Intelligence: USPTO Urges Federal Circuit to Affirm Decision That AI Cannot Qualify as an “Inventor”

In three previous blog posts, we have discussed recent inventorship issues surrounding Artificial Intelligence (“AI”) and its implications for life sciences innovations – focusing specifically on scientist Stephen Thaler’s...more

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

Jones Day on

Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

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