News & Analysis as of

Prior Art Inventions Appeals

BakerHostetler

[Podcast] Make It Plain: Clarity Regarding Obviousness-Type Double Patenting

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In a year defined by landmark decisions, impactful announcements and new standards, clarity in the patent world comes as a welcome relief. It arrived via a federal circuit court decision in August 2024 that settled certain...more

Sunstein LLP

Trade Secret Rights May be Lost Because of A Failure to Review a Competitor’s Prior Art Patent Applications

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A recent decision from a California federal district court should make patent prosecutors and their clients more alert when looking at recent prior art references: they may refer to patent applications filed by competitors...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #3

Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...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

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

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

McDermott Will & Emery

Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge

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The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on...more

McDermott Will & Emery

Private Sale Means Public Fail

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that a private sale of a product embodying the claimed invention did not qualify as a “public disclosure” under 35 U.S.C. §...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

Knobbe Martens

A Private Sale Is Not Sufficient for Public Disclosure Under 35 USC 102(b)(2)(B)

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Before Dyk, Clevenger, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: An invention is not “publicly disclosed” under 35 USC 102(b)(2)(B) by the inventor’s private sale, even though a private sale may...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...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

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

McDermott Will & Emery

Absent Nexus Secondary Considerations Come in Second

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Addressing the nexus between a secondary consideration and the claimed invention in assessing obviousness, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board finding of nonobviousness...more

McDermott Will & Emery

Obviously Prima Facie Case Overcome by Secondary Considerations

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, holding that the Board did not err in finding certain challenged claims nonobvious and not unpatentable based on a showing of several...more

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

2022 Design Patents Year in Review: Analysis and Trends: Federal Circuit Appeals: More Design Patent Case Reversals

In 2022, the Court of Appeals for the Federal Circuit issued six opinions regarding U.S. design patents: three precedential opinions and three unprecedential opinions. Unlike 2021 (where the two precedential opinions on...more

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

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

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

PTAB Strategies and Insights Newsletter: May 2022

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.

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

Buckingham, Doolittle & Burroughs, LLC

A Fine Line Between Co-Owner and Infringer

Can an employee’s unpatentable “idea”, conceived under a duty to assign intellectual property, give rise to co-ownership in an invention conceived after employment terminates? That was the question on appeal in Bio-Rad...more

Quarles & Brady LLP

In re SurgiSil : Much More than a Cosmetic Change to Design Patent Law

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A recent decision of the United States Court of Appeals for the Federal Circuit has fundamentally altered the law on prior art anticipation for design patent applications. In this decision, captioned In re: SurgiSil, L.L.P....more

Knobbe Martens

PTAB Must Consider Evidence Showing Prior Art Is Analogous to Invention

Knobbe Martens on

AIRBUS S.A.S. v. FIREPASS CORPORATION Before Lourie, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Whether an asserted prior art reference is reasonably pertinent to the particular problem...more

Sheppard Mullin Richter & Hampton LLP

Framing Your Pitch: A Lesson from the TTI v. IBG Cases

The U.S. Court of Appeals for the Federal Circuit recently issued three interesting, related opinions interpreting and applying the “technological invention” exception to Covered Business Method Review (“CBM Review”). These...more

McDermott Will & Emery

Absent Clear Disavowal, Preferred Embodiment Does Not Limit Claim Construction

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In a case that hinged on the construction of a disputed claim term, the US Court of Appeals for the Federal Circuit explained that the district court erred in limiting the disputed claim based on the preferred embodiment and...more

Knobbe Martens

Arctic Cat Inc. v. GEP Power Products, Inc.

Knobbe Martens on

Federal Circuit Summary - Before Prost, Reyna, Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural...more

Mintz - Intellectual Property Viewpoints

Continental Circuits LLC v. Intel Corp., et al: Federal Circuit Reemphasizes Prohibition on Importing a Preferred Embodiment into...

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims....more

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