Monthly Minute | Provisional Patent Applications
The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more
On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment,...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
Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC addresses whether an IPR petitioner can assert Article III standing on appeal based on potential infringement liability and potential preclusive effects on its...more
In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more
In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v....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
Provisional applications tempt stakeholders with the possibility of securing a filing date on an expedited basis and limited budget, but the value of that filing date will depend on its ability to serve as a valid priority...more
In Droplets, Inc. v. E*Trade Bank, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that Droplet’s patent was not entitled to the priority date of a provisional application because...more
Recently, the Court of Appeals for the Federal Circuit decided MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, et al., No. 2016-1243 (Fed. Cir. Feb. 13, 2017). This case highlights the importance of a...more
The USPTO Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) proceedings filed by Kyle Bass against two of the five Juxtapid patents listed in the Orange Book. Two of the cited references may...more
Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more
The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more
It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more