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Autonomous Systems & Advanced Mobility: 2023 Trends & Predictions

The Autonomous Systems & Advanced Mobility (ASAM) space is headed for more change in 2023, generating new opportunities and challenges for a growing list of industry players. The adoption of new, complex and connected...more

The EU IP Harmonization Package to Include EU-wide compulsory License

Key Points - The EU aims to harmonize patent protection rules and flexibilities with a layer on top of national rules. This is in line with long-term efforts by the EU institutions to harmonize patent rules and motivated,...more

Director Vidal Hands Down Precedential Decision on Issue of First Impression Addressing Patentability of Multiple Dependent Claims

Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for...more

PTAB Precedential Ruling: Expert Declaration Devoid of Supporting Evidence Dooms IPR Petition

The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more

Autonomous Akin Update - February 2023

Our newsletter reflects the focus of Akin Gump’s cross-practice autonomous systems and advanced mobility team on developments in the regulatory, policy, trade, intellectual property, and cybersecurity and privacy spaces....more

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse of Process

In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more

USPTO Director: Adverse Judgment Not Appropriate Where There Was No 'Unequivocal' Abandonment

The USPTO Director recently conducted sua sponte review of a Patent Trial and Appeal Board decision granting adverse judgment in four IPR proceedings where a panel found that the patent owner had abandoned the contests. In a...more

Autonomous Akin Update - January 2023

Autonomous Akin brings you the latest news and developments regarding autonomous systems and advanced mobility so that you can keep a pulse on what is happening in government and industry that is impactful for your business....more

PTAB Reverses Course and Finds Challenged Patent Claims Unpatentable in Light of Applicant Admitted Prior Art

The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s...more

USPTO Director Issues Sua Sponte Precedential Decision Addressing Abuse of IPR Process

In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes...more

PTAB: Statements About Device Not Disclosed in a Video Are Not Prior Art; Concurrence: Video Itself—If Publicly Available—Is Prior...

The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the...more

PTAB Applies Director’s Guidance and Holds that Compelling Evidence of Unpatentability Precludes Fintiv Denial

In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more

IPR Petition Denied Due to Expert’s Lack of Relevant Experience

A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more

PTAB Orders Production of Final Infringement Contentions from Related Litigations Because they were Inconsistent with Patent...

Petitioners moved for an order requiring Patent Owner to produce discovery comprising Final Infringement Contentions from related district court litigations between the parties.  Petitioners set forth two independent bases...more

District of Delaware: IPR Estoppel Does Not Apply to Prior-Art Products

A judge in the District of Delaware has ruled that an estoppel under 35 U.S.C. § 315(e)(2) does not apply to prior-art products, even if those products are “cumulative” of prior-art patents or printed publications that were...more

USPTO: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more

Interim USPTO Guidance: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

Key Points - On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” Under...more

System Prior Art Allowed at Trial Despite Arguments that Related Printed Publications Could Have Been Asserted in Parallel IPR...

In a recent order, the Eastern District of Texas declined to preclude a defendant from raising prior art system references despite patentee’s argument that similar printed publications could have been raised in earlier inter...more

Voluntary Nature of IPR Proceedings Forecloses Attorney’s Fees, According to District Court

A district court recently denied a motion for attorney’s fees under 35 U.S.C. § 285 where the defendant successfully invalidated each claim of the patent at issue during an inter partes review proceeding. The district court...more

Industry Praise of Consumer Hair Product Sufficient to Rebut Bald Obviousness Allegations

In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the...more

PTAB: Applicant-Admitted Prior Art Out of Bounds in IPR, If Used as Basis for Challenge

In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the...more

Inventor Declaration Excluded by PTAB Because Examination in Foreign Proceeding No Substitute for Cross-Examination by IPR Counsel

In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more

Future Tense in Contractual Language Found Insufficient to Convey Title, Depriving Party of Right to License Patent

Applying recent Federal Circuit precedent requiring language evincing a present conveyance of patent rights, a district court in the Western District of Pennsylvania found that the contractual language “shall become the...more

Speculative Allegations Regarding Operation of Accused Website Doom Patent Infringement Complaint

A judge in the Northern District of Georgia has granted a defendant’s motion to dismiss a patent infringement case for failure to state a claim under Rule 12(b)(6). The court found that the complaint failed to meet the...more

PGR Challenge to Genus Claims Fails Because of Enabling Disclosure of Species in Pre-AIA Priority Applications

The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more

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