News & Analysis as of

Patent Litigation Intellectual Property Protection Prior Art

Baker Botts L.L.P.

The Dangers of Secret Prior Art

Baker Botts L.L.P. on

It is well-established that the availability of a prior art reference is dependent on the “effective filing date” of a patent or patent application. Any practitioner seeking to invalidate a patent knows that the ideal...more

Katten Muchin Rosenman LLP

Stating the Obvious - Katten Kattwalk | Issue 28

The Federal Circuit overturned its 42-year-old obviousness test for designs. Fashion companies, take note. The shape of a handbag, the red sole of a shoe: for fashion companies, design patents have long played a role in...more

Jones Day

Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

Jones Day on

In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

Jones Day

Private Sale Not Necessarily Public Disclosure Under Section 102(b)(2)(B)

Jones Day on

In Sanho Corp. v. Kaijet Technology International Limited, Inc, the Federal Circuit affirmed the PTAB’s decision finding obvious all challenged claims of the ‘429 patent, which relates to a device that provides ports for...more

Jones Day

No Requirement to Raise All Arguments in Rehearing Request

Jones Day on

The Federal Circuit in Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024) (Lourie, Chen, and Cunningham), affirmed the PTAB’s determination that claims of Voice Tech Corp.’s (“Voice Tech”) U.S....more

Dinsmore & Shohl LLP

Excluding Prior Art Based on Private Sales? Federal Circuit Says No.

Dinsmore & Shohl LLP on

A private sale may start an inventor’s one-year filing clock, but it likely won’t save a patentee from an intervening prior art reference. On July 31, 2024, in a precedential decision, the U.S. Court of Appeals for the...more

Jones Day

Director Provides Reminders For Obviousness Analysis

Jones Day on

On July 9, 2024, Director Vidal reversed and remanded a denial of institution of inter partes review (IPR) relating to three Spin Master patents. See Prime Time Toys LLC v. Spin Master, Inc., IPR Nos. 2023-01339, 2023-01348,...more

Jones Day

Prior Art and Public Availability: Key Decisions in German Patent Litigation

Jones Day on

The Situation: Even after the introduction of the European Unitary Patent Court, Germany remains a key battleground in major patent litigations. In the bifurcated German litigation system, nullity cases are heard before the...more

ArentFox Schiff

New Obviousness Standard for Design Patents Has No Impact on $18 Million Jury Verdict

ArentFox Schiff on

One month after the Federal Circuit altered the obviousness standard for design patents in a much-anticipated en banc decision in LKQ Corporation v. GM Global Technology Operations LLC, an Arizona federal judge in Cozy...more

Haug Partners LLP

Ordinary (Artificial) Intelligence in the Art

Haug Partners LLP on

Given their potential to revolutionize many aspects of legal practice and intellectual property, artificial intelligence (“AI”) tools have become a mainstay in the legal space. While AI has its benefits, it also carries...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

Jones Day

Shifting Burden Dooms Patent Owner

Jones Day on

In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

Quarles & Brady LLP

R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

Quarles & Brady LLP on

Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the...more

Knobbe Martens

En Banc Federal Circuit Adopts a New Test for Design Patent Obviousness

Knobbe Martens on

Before Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board....more

Jones Day

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

Jones Day on

Now a more flexible Graham v. John Deere analysis applies. On May 21, 2024, the en banc Federal Circuit overruled the Rosen-Durling test for design patent obviousness, holding that Supreme Court law dictates "a more...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

Fenwick & West LLP on

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

Jones Day

En Banc Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

Jones Day on

The en banc Federal Circuit has overruled the Rosen-Durling test for design patent obviousness, holding that the Supreme Court’s KSR decision dictated “a more flexible approach . . . for determining non-obviousness.” LKQ v....more

Jones Day

Institution Denied For Lack of Sufficient Structure

Jones Day on

The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

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

Requester Side Benchmarks for Successful Reexamination Requests

Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

Jones Day on

On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

Jones Day

Common Ownership Exception Leads to Petition Denial

Jones Day on

The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open...more

AEON Law

Patent Poetry: Federal Circuit Finds No Motive to Combine in Laser Projector Patent Case

AEON Law on

The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more

Knobbe Martens

Obviousness Analysis Does Not Consider Unclaimed Limitations

Knobbe Martens on

JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. Before Prost, Dyk, and Hughes.  Appeal from the United States District Court for the District of New Jersey. Summary: District court erred by adding...more

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

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...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

226 Results
 / 
View per page
Page: of 10

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide