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Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more
A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more
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
2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more
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
The US District Court for the District of Columbia affirmed the dismissal of a case alleging that the US Patent & Trademark Office (PTO) violated the Administrative Procedure Act (APA) by denying the plaintiffs’ rulemaking...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
The US Court of Appeals for the Federal Circuit affirmed the district court’s finding under the Administrative Procedure Act (APA) that the substance of the US Patent & Trademark Office (PTO) Director’s instructions is...more
Apple Inc. v. Vidal, Appeal No. 2022-1249 (Fed. Cir. Mar. 13, 2023) In our Case of the Week, the Federal Circuit allowed Apple’s challenge to the Patent Trial and Appeal Board’s (“PTAB”) Fintiv rules to proceed, at least...more
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
Steep Drop in Discretionary Denials — But Will It Last? The Patent Trial and Appeal Board (PTAB) may be becoming more petitioner-friendly following a June 2022 memorandum that significantly narrows a precedent-setting...more
Steven Thaler filed two patent applications naming “Device for the Autonomous Bootstrapping of Unified Science” (DABUS) as the sole inventor. DABUS is an artificial intelligence software system. The U.S. Patent and Trademark...more
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
Earlier this month, the Federal Circuit affirmed the grant of summary judgment in favor of the U.S. Patent and Trademark Office by the U.S. District Court for the Eastern District of Virginia, finding that the USPTO did not...more
The US Court of Appeals for the Federal Circuit affirmed a decision granting summary judgment in favor of the US Patent & Trademark Office (PTO) regarding the propriety of imposing a restriction requirement on a pre-General...more
The US Court of Appeals for the Federal Circuit revived a petitioner’s validity challenge seeking ex parte review at the US Patent & Trademark Office (PTO), reversing a district court decision dismissing its complaint seeking...more
In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more
Several challenges have been made recently to the Patent Trial and Appeal Board’s (“PTAB’s or Board’s”) controversial practice of denying inter partes review (IPR) petitions based on the status of parallel infringement...more
KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more
[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
FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more
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
On Nov. 10, 2021, the Northern District of California granted the United States Patent and Trademark Office’s (USPTO) motion to dismiss a lawsuit brought by Apple and co-plaintiffs challenging the Patent Trial and Appeal...more
In Apple Inc. et al. v. Hirshfeld, case number 5:20-cv-06128, in the U.S. District Court for the Northern District of California, the Court upheld the Patent Trial and Appeal Board’s (PTAB) practice of denying patent reviews...more