News & Analysis as of

Prior Art Obviousness Patent Applications

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

DLA Piper

Federal Circuit Refines Obviousness Framework for Drug and Biologic Dosing Regimens

DLA Piper on

The United States Court of Appeals for the Federal Circuit recently affirmed a district court ruling that a pharmaceutical dosing claim limitation was unpatentable due to obviousness-type double patenting. The court found...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

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

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Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

Baker Botts L.L.P. on

This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more

McDonnell Boehnen Hulbert & Berghoff LLP

Immunogen, Inc. v. Stewart (Fed. Cir. 2025)

After creating something of a frisson due to the apprehension that the Federal Circuit might be convinced to re-evaluate whether it was a necessary element for establishing obviousness for the skilled artisan to have had a...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation

Baker Botts L.L.P. on

This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

Alston & Bird

Intellectual Property Litigation Newsletter | February 2025

Alston & Bird on

Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that the Federal Circuit always says never, patent publications...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

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While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Clarifies Timing Issues Associated with Pre-AIA Patent Applications in Lynk Labs, Inc. v. Samsung...

In this edition of The Precedent, we outline the recent federal circuit decision in Lynk Labs, Inc. v. Samsung Elecs. Co. This case addresses the date on which a pre-AIA published patent application obtains its status as...more

Hudnell Law Group

Published but not Public? Federal Circuit Confirms Published Patent Applications Count as Prior Art from Filing Date in IPRs.

Hudnell Law Group on

On January 14, 2025, the United States Court of Appeals for the Federal Circuit issued a precedential decision in Lynk Labs, Inc. v. Samsung Electronics Co., No. 23-2346 (Fed. Cir. Jan. 14, 2025), addressing whether a...more

Dorsey & Whitney LLP

When Is a Published Patent Application Prior Art?

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In a precedential opinion entered on January 14, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”) invalidating claims of a patent on...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

Jones Day

When Is a Published Patent Application Prior Art in an IPR?

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On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more

McDonnell Boehnen Hulbert & Berghoff LLP

Lynk Labs, Inc. v. Samsung Electronics Co. (Fed. Cir. 2025)

Published Patent Applications Are Prior Art as of the Filing Date, Not the Publication Date - Lynk Labs raises a simple question of statutory interpretation with surprisingly important ramifications:  in inter partes review,...more

Wolf, Greenfield & Sacks, P.C.

Published Application Art at the PTAB: Lynk Labs v. Samsung Electronics, Co., Ltd.

In Lynk Labs, Inc., v. Samsung Electronics Co., Ltd., the Federal Circuit reinforced that patent applications may serve as prior art in IPR proceedings as of their filing date—even where those applications were not published...more

Axinn, Veltrop & Harkrider LLP

A POSA’s Motivation Is Not Required To Be the Same as the Inventor’s in Evaluating Obviousness

In its first precedential opinion of 2025, Honeywell v. 3G Licensing, No. 2023-1354, the Federal Circuit held that a person of ordinary skill in the art (POSA) needs not to have the same motivation as the inventor in an...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

WilmerHale

Feeding and Generating AI Creates Patent Application Challenges

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The explosion of artificial intelligence has raised some challenging questions in patent law, particularly with prior art, or the body of knowledge available prior to the filing of patent application. Two of the most...more

Goodwin

Eight on AI: Quick Considerations on Patenting Drug Discovery Therapeutics using Artificial Intelligence (AI) and Life...

Goodwin on

Many life science companies are using AI/ML to identify new disease targets and new therapeutics, predict the efficacy and toxicity of potential clinical therapeutic candidates, design clinical trials and dosing or treatment...more

Morrison & Foerster LLP

Federal Circuit Overrules Obviousness Test for Design Patents

In its first en banc patent decision since 2018, the Federal Circuit overruled the longstanding obviousness test for design patents under 35 U.S.C. 103. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21‑2348 slip op. (Fed....more

Wolf, Greenfield & Sacks, P.C.

LKQ v. GM: What In-House Counsel Needs to Know About This Change in Design Patent Law

On May 21, 2024, the Federal Circuit issued an en banc decision (full court, instead of the typical three-judge panel) in LKQ Corp. et al. v. GM Global Technology Operations LLC, overturning the long-standing obviousness test...more

BakerHostetler

USPTO Requests Public Comments on Patentability in View of AI Advancements

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The USPTO published a request for comments (RFC) on April 30th, focusing on how advancements in artificial intelligence (AI) may impact the USPTO’s assessment of patentability governing (i) what may qualify as prior art and...more

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

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For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

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