Building a Cost-Effective Global Patent Portfolio Using the Netherlands
3 Key Takeaways | Third party Prior Art Submissions at USPTO
Conflicting Application in China’s Patent System
Patent Right Evaluation Report in China’s Patent System
Stages of Patent Invalidation Proceedings
The Patent Process | Interview with Patent Attorney, Robert Greenspoon
Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast
Nonpublication Requests For Patent Applications: Disadvantages
Podcast: IP Life Sciences Landscape: Aiding Orange and Purple Book Patent Owners in Developing PTAB Survival Skills
Is The Deck Stacked Against Patent Owners In The PTAB?
What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. May 21, 2025) In its first en banc decision of the year, the Federal Circuit reversed a district court’s admission of expert testimony concerning damages,...more
Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more
SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more
It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more
Experts play a crucial role in patent cases. Experts opine on claim construction, infringement, invalidity and the proper amount of damages. And the exclusion of an expert witness can significantly impact the outcome of a...more
Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more
The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more
Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution...more
Director Vidal has issued two Director Review decisions related to the evaluation of expert testimony in Patent Trial and Appeal Board (PTAB) proceedings. ...more
Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more
The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more
The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more
Inter partes reviews (IPRs) are litigation-like procedures held before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that are used to challenge the validity of patents. Typically,...more
The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more
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
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...more
A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more
Self-similarity is a characteristic found in many physical, natural, and human-made systems. In short, it describes a class of structures or behaviors that are at least partially-invariant to time or scale. Thus, these...more
Almost four years ago, in a relatively rare occurrence based on there being an insufficient factual record to permit proper appellate review, the Federal Circuit vacated a District Court decision rendering invalid the claims...more
Last month in Cornell Research Foundation, Inc. v. Vidal, the Federal Circuit affirmed the Patent Trial and Appeal Board's determinations in six inter partes review proceedings that invalidated the challenged claims for being...more
In the weeks preceding a recent Hatch-Waxman bench trial, a district court excluded portions of an expert’s opinion on obviousness that addressed internal documents and inventor testimony concerning the “inventors’ path” to...more
Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art - In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied...more
In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more