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Who Solved the Problem? Joint Inventors, That’s Who

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to correct inventorship in a post-issuance inventorship dispute, finding that the alleged joint inventors’ contributions were significant...more

Inventorship Hosed Clean: Contribution, Corroboration and Collaboration Prove Joint Invention

The US Court of Appeals for the Federal Circuit affirmed a decision to correct inventorship, finding that the alleged joint inventor’s contribution to a claimed invention was significant and adequately corroborated by...more

What’s Shakin’ Bacon? Not Inventorship—Contribution to Invention Can’t Be “Insignificant”

The US Court of Appeals for the Federal Circuit reversed a district court decision and found that an asserted inventor not named in the application was not a joint inventor because in the context of the entire invention his...more

Console Yourself: Patent Owner Bears IPR Estoppel Burden

Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that...more

No Mulligans Here: PTO Rewinds Reexamination Based on Estoppel

The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR)....more

Only under Rare Circumstances Can the Patent Trial & Appeal Board Find Proposed Substitute Claims Unpatentable on Its Own

The US Court of Appeals for the Federal Circuit addressed, for the first time, the issue of when the Patent Trial & Appeal Board (Board) may raise a ground of unpatentability that was not advanced by a petitioner in relation...more

If It Ain’t Broke: Motivation to Modify Compound Must Consider All Its Characteristics

Affirming a Patent Trial and Appeal Board (PTAB) decision finding claims directed to an epilepsy drug patentable, the US Court of Appeals for the Federal Circuit found that a skilled artisan would not have been motivated to...more

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