News & Analysis as of

Patent Applications United States Patent and Trademark Office Appeals

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

Sunstein LLP

Trial Court Ruling Threatens Patent Portfolio Development

Sunstein LLP on

A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against...more

McDonnell Boehnen Hulbert & Berghoff LLP

Living with Cellect – Three Best Practices

On Friday, January 19, 2024, the Court of Appeals for the Federal Circuit issued an Order refusing to rehear In re Cellect, LLC en banc. This likely means that the holding in In re Cellect will represent the law regarding...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

Woods Rogers

What Barbenheimer Can Teach Us About Intellectual Property

Woods Rogers on

Barbenheimer is a new term for consecutively watching the movies “Barbie” and “Oppenheimer.”  In honor thereof, we present the Barbenheimer Legal Alert. Did you know Mattel sued, and lost, to stop the “Barbie Girl” song?...more

AEON Law

Patent Poetry: US Supreme Court Declines to Consider Appeal of AI Inventor Decision

AEON Law on

The US Supreme Court has declined to hear a petition on the issue of whether artificial intelligence (AI) can be considered an inventor on a patent. As we discussed in this blog, in 2019 Stephen Thaler sought patent...more

Bradley Arant Boult Cummings LLP

The Long Con Otherwise Known as Prosecution Laches

Last week, in Personalized Media Communications, LLC v. Apple, Inc., the Federal Circuit left intact Judge Rodney Gilstrap’s ruling of unenforceability based on prosecution laches and deprived Personalized Media...more

McDermott Will & Emery

PTO Adds Green Energy Category to Patents for Humanity Program

McDermott Will & Emery on

On March 6, 2023, the US Patent & Trademark Office (PTO) introduced a new green energy category to its Patents for Humanity Program. This new award category provides business incentives for patent applicants, holders and...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

McDermott Will & Emery

PTO to Begin Issuing Electronic Patent Grants

On February 28, 2023, the US Patent & Trademark Office (PTO) issued a final rule announcing it would begin issuing electronic patent grants (eGrants) starting April 18, 2023. These eGrants are the official copies of patent...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

McDermott Will & Emery

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness...more

McDermott Will & Emery

Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the...more

Proskauer - Life Sciences

Is an Appeal Time Well-Spent? For Patents, That Depends . . .

In Sawstop Holding LLC v. Vidal the Federal Circuit confirmed what many practitioners suspected— the Patent and Trademark Office will only award a patent term adjustment to offset a delay caused by appellate review of a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022 #2

Arendi S.A.R.L. v. LG Electronics Inc., Appeal No. 2021-1967 (Fed. Cir. Sept. 7, 2022) - In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #3

Hologic, Inc. v. Minerva Surgical, Inc., Appeal Nos. 2019-2054, -2081 (Fed. Cir. Aug. 11, 2022) - Our Case of the Week follows the Hologic saga as it returns to the Federal Circuit on remand from the Supreme Court’s...more

AEON Law

Patent Poetry: Federal Circuit Rules AI Can't Invent

AEON Law on

The Federal Circuit has ruled that only human beings – and not an artificial intelligence (AI) can be considered an “inventor” under US patent law. (We wrote about this issue way back in 2017, by the way…)... ...more

AEON Law

Patent Poetry: Typo Can’t Be Used to Prove Obviousness

AEON Law on

The Federal Circuit has held that a transcription error in a prior art document wouldn’t have been relied on by a person of ordinary skill in the art (POSITA) and thus couldn’t be used to prove obviousness....more

BakerHostetler

Federal Circuit Hears Case on Whether an AI-Generated Invention Is Patentable

BakerHostetler on

On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable. The Patent Applications - As described in a...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.

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021)

In Hyatt, the U.S. Court of Appeals for the Federal Circuit addressed “for the first time the PTO’s assertion of a prosecution laches defense in a civil action brought by a patentee under 35 U.S.C. § 145 to obtain a patent.”...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Proskauer - Life Sciences

Update on Artificial Intelligence as a Patent Inventor

Our previous blog posts, Artificial Intelligence as the Inventor of Life Sciences Patents? and Update on Artificial Intelligence: Court Rules that AI Cannot Qualify As “Inventor,” discuss recent inventorship issues...more

Morgan Lewis

Federal Circuit Narrows Scope of Prior Art Available for Design Patents

Morgan Lewis on

The US Court of Appeals for the Federal Circuit’s recent decision on an appeal from the Patent Trial and Appeal Board to limit prior art for design patent applications to only analogous fields may make it easier for...more

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