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

Fish & Richardson

Recapping a Busy Summer for Director Review

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United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Cracks Down on Patent Owner for Withholding Data and Imposes Severe Sanctions

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more

Knobbe Martens

Federal Circuit Review | July 2024

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In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that  preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more

Jones Day

LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

Jones Day on

Those following this blog knew change was coming to design patent obviousness in the LKQ v. GM decision by the en banc Federal Circuit. In its May 21, 2024 decision, the court overruled the long-standing Rosen-Durling test...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024 #4

LKQ Corporation v. GM Global Technology Operations LLC, Appeal No. 2021-2348 (Fed. Cir. May 21, 2024) - In a rare en banc opinion, the Federal Circuit overruled decades of prior precedent concerning the standard to...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – May 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 - May 2024

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On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

McDermott Will & Emery

Drawing Can Teach Claim Limitations If “Clear on Its Face”

McDermott Will & Emery on

Addressing when a drawing in a prior art reference includes a teaching that is “clear on its face,” the Director of the US Patent & Trademark Office vacated and remanded a Patent Trial & Appeal Board decision denying...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.

What’s in a Name? Why Reexamination Is Not a Re-Examination

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more

Goodwin

Issue 44: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Erise IP

Eye on IPRs, March 2024: PTAB’s Claim Construction of Cooling Patent is Hot Issue, SCOTUS Won’t Hear IPR Joinder Challenge

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: Cooling Patent Restored by Federal Circuit Over PTAB’s Claim Construction - ...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification...more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

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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

Fish & Richardson

2023 Post-Grant Annual Report

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2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...more

Foley & Lardner LLP

USPTO Says Prior Art Date of AIA Patents is Not Limited By Dynamic Drinkware

Foley & Lardner LLP on

When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more

Jones Day

Proceed With Caution When Using Wayback Machine® Prior Art

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Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. ...more

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

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...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

Foley & Lardner LLP

USPTO Director Uses New Review Process to Order Independent Rehearing of PTAB Institution Decision

Foley & Lardner LLP on

Last week marked the first time that USPTO Director Vidal acted under the Revised Interim Director Review Process to order a Delegated Rehearing Panel to review a decision denying institution of inter partes review (IPR). In...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

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The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

Jones Day

Patent Owner Unable to Change Inventorship During Remand

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At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023

Sisvel International S.A. v. Sierra Wireless, Inc., Appeal Nos. 2022-1493, -1547 (Fed. Cir. Oct. 6, 2023) Our Case of the Week falls in a series of cases concerning patents that claim a means for performing a particular...more

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