Ways to Amend the Claims in the Patent Invalidation Proceedings
As a firm responsible for managing global portfolios for pharmaceutical companies, we closely follow and seek to stay abreast of developments regarding patentability in various jurisdictions. We recently reviewed the Unified...more
The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more
In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more
A district court recently granted a Rule 12(b)(6) dismissal of patent claims directed to intermittent fault detection (IFD) technology for electrical systems in aircrafts, deciding that the asserted claims are patent...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
When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more
The Federal Circuit has held that the claims of a “SNALP” patent were inherently anticipated by prior art. In Arbutus Biopharma Corp. v. ModernaTX, Inc., Arbutus appealed a decision in an inter partes proceeding by the Patent...more
We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more
On December 16, in Adasa Inc. v. Avery Dennison Corporation, the Federal Circuit upheld patentability of claims reciting an RFID transponder with storage for a particular type of serial number—affirming the district court’s...more
The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US...more
The ACC last month hosted the San Francisco Bay Area Life Sciences CLE Conference, giving TransPerfect Legal Solutions (TLS) team members the opportunity to learn and connect with colleagues. One of the panels, moderated by...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
An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more
While many patiently await developments in the pending U.S. interference proceedings relating to the CRISPR patents in the U.S., matters are progressing in Europe. The Opposition Division (OD) of the European Patent Office...more
Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more
A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims. The...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
PATENT CASE OF THE WEEK - Natural Alternatives International, Inc. v. Iancu, Appeal No. 2017-1962 (Fed. Cir. Oct. 1, 2018) In an appeal from an inter partes reexamination, the Federal Circuit affirmed the Board’s...more
The Patent Trial and Appeal Board (PTAB) recently denied institution of an inter partes review (IPR), holding that the patent at issue had an effective filing date antedating the primary prior art reference. The...more
As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more
A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. The recent decision of the U.S. Federal Circuit in...more
The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v....more
On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written...more