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Printed Publications Patent Infringement

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

International Lawyers Network

Can a Slide Show Be Considered a Printed Publication to Prevent Patentability?

Suppose you have an invention and disclose it in a slide show to an audience attending a conference. Can this slide show be considered a printed publication to prevent the invention from being novel and patented? Are there...more

Jones Day

Availability of Document on Government Website Insufficient for Institution

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In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB...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

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publication

In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their...more

Akin Gump Strauss Hauer & Feld LLP

System Prior Art Allowed at Trial Despite Arguments that Related Printed Publications Could Have Been Asserted in Parallel IPR...

In a recent order, the Eastern District of Texas declined to preclude a defendant from raising prior art system references despite patentee’s argument that similar printed publications could have been raised in earlier inter...more

Jones Day

Confidential Manual Deemed Not A Printed Publication

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In a recent decision, the Patent Trial and Appeals Board found that no claims challenged were unpatentable, after finding manuals relied upon as prior art did not qualify as “printed publications” under 35 U.S.C. §...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Jones Day

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

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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

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

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

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 exception. It briefly returned to live...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

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

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more

Fish & Richardson

Fish Post-Grant Radio: Episode #13: Rick Bisenius

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This episode of Fish Post-Grant Radio features Fish attorneys Stuart Nelson – in his final episode as host – and Rick Bisenius, who will take over from Stuart going forward. In it, they discuss major precedential PTAB...more

Jones Day

Printed Publications: Simply Existing Isn’t Enough

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When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art.  Pursuant to...more

Knobbe Martens

Federal Circuit Review - February 2021

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Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation - In M & K Holdings, Inc. v. Samsung Electronics Co.,Ltd., Appeal No. 20-1160, the Federal Circuit...more

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

PTAB Strategies and Insights - February 2021

[co-author: Kathleen Wills] 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...more

McDermott Will & Emery

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

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The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

Goodwin

Issue Twenty-Six: PTAB Trial Tracker

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The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Orrick, Herrington & Sutcliffe LLP

User Manuals, Reverse Engineering Reports, and Other Commercial Documents: When Are They Publicly Accessible?

In Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40, at 23 (PTAB Jan. 23, 2020), the Patent Trial and Appeal Board clarified how a reference tied to a commercial product could qualify as a “printed...more

Akin Gump Strauss Hauer & Feld LLP

Far-Reaching Effect of IPR Estoppel Dooms Invalidity Defense Based on Prior Art Product

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more

Akin Gump Strauss Hauer & Feld LLP

Calling a Printed Publication a “System” is Not Enough to Avoid IPR Estoppel

A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more

White & Case LLP

Supreme Court Says America Invents Act Did Not Alter On-Sale Bar

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Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more

McAfee & Taft

Gavel to Gavel: Supreme Court provides clarity

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Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #3

PATENT CASE OF THE WEEK - VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) The Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (“PTAB”), which...more

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