News & Analysis as of

Patents Written Descriptions Patent Ownership

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

2024 Design Patents Year in Review: Analysis & Trends - Design Patents at the PTAB: 2024 in Review

Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v....more

Jones Day

Institution Denied Based On Written Description in “Alternative Embodiments”

Jones Day on

On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10....more

Sheppard Mullin Richter & Hampton LLP

Parus Holdings, Inc. v. Google LLC, No. 2022-1269, 2022-1270 (Fed. Cir. Jun. 12, 2023)

This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider...more

Harris Beach Murtha PLLC

Federal Circuit Imposes Heightened Standard for Written Description Support of Negative Claim Limitations

In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held patent claims invalid for lack of written description where a negative limitation was...more

McDermott Will & Emery

Outlier? Split Federal Circuit Denies En Banc Review of Written Description Requirement

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit denied a patent owner’s request for en banc rehearing of a panel decision that invalidated a patent for lack of written description on the basis that a person of skill in the...more

McDermott Will & Emery

Patent Venue Statute Doesn’t Apply to Third-Party Counterclaim Defendant; Acts in Furtherance of Partnership May Be Imputed to...

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court’s determination of proper venue, finding that the patent venue statute, 28 U.S.C. § 1400(b), does not apply to a third-party counterclaim defendant and...more

Mintz - Intellectual Property Viewpoints

Written Description Requirement Challenges: Federal Circuit Decision Sheds Light on How Expert Testimony Can Help

Earlier this month, in Novartis Pharms. Corp., Inc. v. Accord Healthcare, Inc., et al., No. 2021-1070, the Federal Circuit issued a helpful decision concerning the not-often-discussed written description requirement. The...more

Amundsen Davis LLC

Invention Disclosure Form: Why Does It Matter?

Amundsen Davis LLC on

One of the first things patent attorneys will do, when you speak with them about filing a patent application, is send you an invention disclosure form to be filled out. Many companies also complete invention disclosure forms...more

Fenwick & West LLP

Instructions for Reviewing Your Patent Applications

Fenwick & West LLP on

This memorandum explains the steps you should take in reviewing a draft of your patent application, as well as your duties in regards to providing information that is material to the examination of your patent application by...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Foley & Lardner LLP

Lumigan Patents Upheld by Unexpected Results

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In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit affirmed the district court decision that upheld the validity of the Allergan patents relating to Lumigan® 0.01% glaucoma eye drops. This decision shows that it is still...more

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