News & Analysis as of

Patent Litigation Derivation Proceeding

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Jones Day

Prior Conception Defeats Otherwise Sufficient Derivation Showing

Jones Day on

In its second-ever Final Written Decision in a derivation proceeding, the Patent Trial and Appeal Board (“PTAB”) determined that a patent application for a biocidal composition and method of producing said biocidal...more

Jones Day

Derivation Decision Offers Several Reminders for Petitioner

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The PTAB recently issued a rare decision instituting a derivation proceeding, in Global Health Solutions LLC v. Selner, DER2017-00031 (“GHC”). The GHC institution decision provides several lessons for future petitioners...more

Kilpatrick

5 Key Takeaways - PTAB Trials Insights and Strategies-Leveraging Recent Development at the PTAB

Kilpatrick on

Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more

McDermott Will & Emery

A Window into PTAB Derivation Proceedings

In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - June 2018

Orange Book-Listed Patents Prove to Be Popular Targets for AIA Challenges - On March 13, 2018, Chief Administrative Patent Judge Ruschke of the Patent Trial and Appeal Board (PTAB) released findings of the Patent Office’s...more

Locke Lord LLP

All Claim Limitations Must be Shown for Derivation Under 35 U.S.C. § 102(f) And Obviousness

Locke Lord LLP on

Introduction - In proving a patent invalid (or infringed), all claim limitations must be considered. A recent case illustrates this maxim for both derivation under 35 U.S.C. § 102(f) and obviousness under 35 U.S.C. §...more

Ballard Spahr LLP

Amended PTAB Rules Give Patent Owners a Boost

Ballard Spahr LLP on

The U.S. Patent and Trademark Office (USPTO) has unveiled a series of new rules that provide for significant changes to the procedures followed in Patent Trial and Appeal Board (PTAB) proceedings, including inter partes...more

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