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35 U.S.C. § 311(b)

McDermott Will & Emery

Pending Appeal Does Not Divest Board of Statutory Authority to Institute IPRs

McDermott Will & Emery on

In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent Trial & Appeal Board had statutory...more

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

Jones Day on

Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Jones Day

PTAB Issues Guidance With Regard to AAPA

Jones Day on

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

Fenwick & West LLP

Obviousness, Common Sense and Sensibility: Federal Circuit Ruling Offers Cautionary Tale for Patent Applicants

Fenwick & West LLP on

The U.S. Supreme Court’s 2007 decision in KSR International v. Teleflex altered the obviousness inquiry under 35 U.S.C. § 103 in determining whether a claimed invention passes muster under the Patent Act. The KSR Court...more

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

PTAB Strategies and Insights - July 2020: Federal Circuit Confirms PTAB's Ability to Consider Subject Matter Eligibility of...

On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more

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