Ways to Amend the Claims in the Patent Invalidation Proceedings
While direct patent infringement is a strict liability offense, liability for inducing another’s infringement requires an element of intent. Specifically, the party accused of inducement must have known of the patent and...more
A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) ruling, based on a written description analysis, that certain claims were invalid as anticipated by an earlier priority...more
The US Court of Appeals for the Federal Circuit found that cancellation of a patent in an inter partes review (IPR) proceeding is not a taking and does not grant the patentee any compensable claim against the United...more
On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR...more
A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent’s claim of priority did not apply retroactively in light of an already issued final written...more
Addressing limitations on the role of the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit explained that the PTAB erred in rejecting a patent owner’s request to file a request for a...more
The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more
HONEYWELL INTERNATIONAL, INC. v. ARKEMA INC., ARKEMA FRA NCE - Before Newman, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board - Summary: The Patent Trial and Appeal Board (“Board”) does not have the...more
Federal Circuit Summary - Before Prost, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board Summary: Removing the priority claim of one application in a chain can affect the ability of pending and...more
Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more
Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more
Addressing the doctrine of inherent disclosure, the US Court of Appeals for the Federal Circuit held that a protein can satisfy the written description requirement when the priority application discloses only a partial amino...more