News & Analysis as of

Priority Patent Claims Written Descriptions Patent Trial and Appeal Board

Morgan Lewis

Priority Catch-22: Federal Circuit Chills Design Patent with Rejection of Priority Claim

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that highlights a risk in design patent prosecution—specifically, attempting to claim priority to a utility application. In re Floyd, the Federal...more

McDermott Will & Emery

IPR on Written Description? Claims Found Unpatentable Based on Lack of Entitlement to Priority Date

McDermott Will & Emery on

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

Akin Gump Strauss Hauer & Feld LLP

PTAB: Patent Owner’s Burden Regarding a Showing of Priority Is Strictly Circumscribed by the Extent of Petitioner’s Challenge in...

A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...more

Knobbe Martens

Federal Circuit Review - October 2019

Knobbe Martens on

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

Knobbe Martens

The PTAB Cannot Approve or Deny Certificates of Correction

Knobbe Martens on

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

Knobbe Martens

IPR Denied after Board Finds Asserted PCT Publication Not Entitled to Priority Application’s Filing Date under Pre-AIA 35 U.S.C. §...

Knobbe Martens on

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

McDermott Will & Emery

Inherent Disclosure Supplies Adequate Written Description for Priority Claim

McDermott Will & Emery on

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

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