News & Analysis as of

Appeals Inventors Section 102

McDermott Will & Emery

Private Sale Means Public Fail

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that a private sale of a product embodying the claimed invention did not qualify as a “public disclosure” under 35 U.S.C. §...more

McDermott Will & Emery

Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by...more

McDermott Will & Emery

Co-Authorship ≠ Co-Inventorship but Can Be Supportive of Inventive Contribution

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision because it failed to resolve fundamental testimonial conflict relating to inventive contribution and complete...more

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

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Dechert LLP

Surgeries Conducted More Than a Year Before Patenting Found Not to Bar Patent on Surgical Method

Dechert LLP on

In an important decision impacting life sciences patentees, a divided panel of the Federal Circuit in Barry v. Medtronic, Inc., Appeal No. 2017-2463 (Fed. Cir. January 24, 2019), affirmed a jury’s finding that a doctor was...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more

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