News & Analysis as of

Patents Prior Art Patent Ownership

Jones Day

Director Provides Reminders For Obviousness Analysis

Jones Day on

On July 9, 2024, Director Vidal reversed and remanded a denial of institution of inter partes review (IPR) relating to three Spin Master patents. See Prime Time Toys LLC v. Spin Master, Inc., IPR Nos. 2023-01339, 2023-01348,...more

Akin Gump Strauss Hauer & Feld LLP

IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

Jones Day

Shifting Burden Dooms Patent Owner

Jones Day on

In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

Knobbe Martens

Federal Circuit Review | May 2024

Knobbe Martens on

Infringement Judgement is Only Final when there’s Nothing Left to Do but Execute - In Packet Intelligence LLC v. Netscout Systems, Inc., Appeal No. 22-2064, the Federal Circuit held that an infringement judgment is only...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – May 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Jones Day

Institution Denied For Lack of Sufficient Structure

Jones Day on

The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Requester Side Benchmarks for Successful Reexamination Requests

Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategies for Successful Patent Owner Reexamination Requests

Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

Jones Day on

On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

Foley & Lardner LLP

Cancer Drugs: Strategies For Patenting Antibody-Drug Conjugate Inventions

Foley & Lardner LLP on

Antibody-drug conjugate (ADC) is a promising class of cancer treatments with accelerating U.S. Food and Drug Administration (FDA) approval and rapidly growing market size as discussed in previous articles in this series. This...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

What’s in a Name? Why Reexamination Is Not a Re-Examination

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

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

Jones Day

Claim Construction Dispositive In Patentability Determination

Jones Day on

It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification...more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

Jones Day on

In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Jones Day

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

Jones Day on

In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Merely Showing That a Reference Was Available on the Internet Does Not Establish ‘Public Accessibility’

The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more

Jones Day

Conception and Reduction to Practice Dates Matter

Jones Day on

In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more

Jones Day

Proceed With Caution When Using Wayback Machine® Prior Art

Jones Day on

Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. ...more

Jones Day

Failure to Prove “Prior” Art Results in Denial

Jones Day on

The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art.  IPR2023-00732, Paper 23 (November 2, 2023)....more

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

Akin Gump Strauss Hauer & Feld LLP

Senior Circuit Judge Issues Split Decision on Patent Eligibility of Claims Directed to Restricting Access to Computer Files

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C....more

Bradley Arant Boult Cummings LLP

Some Touch Up Needed: The Federal Circuit Partially Confirms the PTAB’s View of Analogous Art

In Corephotonics, Ltd. v. Apple Inc., the Federal Circuit partially signed off on Apple’s win before the Patent Trial and Appeal Board (PTAB) invalidating a number of patents owned by Corephotonics relating to dual-aperture...more

111 Results
 / 
View per page
Page: of 5

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide