News & Analysis as of

Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office Patent Applications

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

McDermott Will & Emery

Legal Lens on the Unified Patent Court | October 2024

McDermott Will & Emery on

The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property (IP) team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified...more

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

Demonstrating Unequivocal Intent to Broaden in Reissue

Takeaways: - Patentees must demonstrate “unequivocal intent” to broaden claims in a broadening reissue. - To establish a broadening reissue, a patentee’s actions must align with their words within the two year statutory...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

Baker Donelson on

As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

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

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

Fenwick & West LLP

Should a Printed Publication Be Considered in Inter Partes Reviews Based Only on its Publication Date?

Fenwick & West LLP on

Lynk Labs has presented an argument to the Federal Circuit, asserting that patent applications should only be utilized to invalidate patents in inter partes reviews based on their publication date. Currently, the filing date...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips - April 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

WilmerHale

PTAB/USPTO Update - March 2024

WilmerHale on

On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...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

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

White & Case LLP

AI Legal News Summer Roundup: Edition 5

White & Case LLP on

...We round out our series with a summary of several developments around the world that focus on the adequacy of the various jurisdictions' laws in addressing the opportunities and risks arising from generative AI....more

Sheppard Mullin Richter & Hampton LLP

Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc., v. Modernatx, Inc., FKA Moderna Therapeutics, Inc. No. 2020-1183...

This case addresses the legal standard for inherent anticipation. The ’127 patent is directed to an invention that provides stable nucleic acid-lipid particles (“SNALP”) that have non-lamellar structure and “comprise a...more

Foley & Lardner LLP

USPTO Provides Updated Guidance on the Use of Applicant Admitted Prior Art

Foley & Lardner LLP on

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal recently altered a decision by the Patent Trial and Appeal Board (PTAB) to address the use of applicant admitted prior art (AAPA) in inter partes review (IPR)...more

McDonnell Boehnen Hulbert & Berghoff LLP

You Are Going to Hear A Lot More FUD about Patent Law, So Here Are Some Facts

They may have known that it was coming.  Over the last several weeks, lobbying organizations and high-tech blogs have been slowly introducing the same old false, misleading, and deceptive arguments against patent law.  These...more

Foley & Lardner LLP

Significant New USPTO Fees Proposed for 2025

Foley & Lardner LLP on

The USPTO has commenced the fee-setting process for fee adjustments it expects to implement in January 2025. While many fee changes are modest (~5%), the USPTO proposes significant increases to design patent fees and PTAB...more

McCarter & English, LLP

Impact of IPR Clarified

Patent owners know that competitors can challenge their patents in the US Patent and Trademark Office (USPTO). These challenges, known as inter partes reviews (IPRs), were created with the goal of improving patent quality....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023

Regents of the University of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168 (Fed. Cir. Mar. 6, 2023) The Federal Circuit’s only precedential patent opinion this week focuses on the written description requirement...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th...

Smith & Nephew petitioned for IPR of Arthrex’s ’907 patent, which claims a surgical device with an “eyelet” through which a suture is threaded. Smith & Nephew argued in relevant part that certain claims were anticipated by a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

Mintz - Intellectual Property Viewpoints

Year in Review: The Most Popular IP Posts of 2022

As 2023 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2022. According to many readers, hot IP topics included entity...more

Kilpatrick

3 Key Takeaways | Third party Prior Art Submissions at USPTO

Kilpatrick on

Kilpatrick Townsend Partner Nesli Doran-Civan recently spoke about Third-party Prior Art Submissions at USPTO. Here are the 3 key takeaways from her presentation....more

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