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Patent Litigation United States Patent and Trademark Office Patents

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

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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: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

McDermott Will & Emery

Legal Lens on the Unified Patent Court | October 2024

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The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property (IP) team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - October 2024

The PTAB Review begins by exploring collateral estoppel from unpatentability determinations in inter partes review (IPR) proceedings. Next, it summarizes recent developments at the U.S. Patent and Trademark Office relevant to...more

Troutman Pepper

Director Review Under the USPTO's Final Rule – Patents: Post-Grant Podcast

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Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper attorneys Andy...more

DLA Piper

Effect of Patent Term Extensions on Obviousness-type Double Patenting

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The US Court of Appeals for the Federal Circuit issued its opinion in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024), holding that “a first-filed, first-issued, later-expiring claim cannot...more

Pillsbury Winthrop Shaw Pittman LLP

The Beginning of the End for the USPTO’s After Final Consideration Pilot Program 2.0

The decision to end the program follows public resistance to a proposed fee structure aimed at offsetting its high administrative costs. The U.S. Patent and Trademark Office (USPTO) extended the After Final Consideration...more

Jones Day

Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

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The Supreme Court denies Cellect LLC's petition for certiorari to consider whether patent term adjustment ("PTA") should be included in patent term for obviousness-type double patenting ("ODP") purposes....more

Jones Day

PTO Promotes Judicial Independence in Final PTAB Rule

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On June 12, 2024, the USPTO issued a final rule governing the pre-issuance circulation and review of decisions within the PTAB. This formalized current USPTO procedures within the Standard Operating Procedure (SOP4) adopted...more

Fenwick & West LLP

Key Federal Circuit Patent Rulings Impacting Your Business - Recent Rulings

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In Wisconsin Alumni Research Foundation v. Apple, the Federal Circuit expanded the preclusive effect of non-infringement rulings. It ruled that prior judgments of non-infringement can prevent follow-on lawsuits involving...more

Hudnell Law Group

Common Patent Litigation Defenses Insufficient To Justify Award Of Attorneys’ Fees

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In Realtime Adaptive Streaming LLC v. Sling TV, LLC, et al., 2024 U.S. App. LEXIS 21348 (Fed. Cir. Aug. 23, 2024), the Federal Circuit, in an opinion authored by Judge Alan D. Albright sitting by designation, vacated and...more

Alston & Bird

Patent Case Summaries | Week Ending September 20, 2024

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Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 2024-1398 (Fed. Cir. (D. Minn.) Sept. 16, 2024). Opinion by Mazzant (sitting by designation), joined by Moore and Prost....more

Jones Day

USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

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The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more

Fish & Richardson

Should the Experimental Use Exception Be Broadened?

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On June 28, 2024, the United States Patent and Trademark Office (“USPTO”) requested the public’s views on the current state of the common law experimental use exception to patent infringement and whether legislative action...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

A&O Shearman

Patent litigation defendants beware: RESTORE Patent Rights Act

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Are injunctions back as a matter of law in all patent cases? The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024 aims to address a growing concern in...more

Maynard Nexsen

When Does My Patent Expire? A Quick Glance at Patent Term Adjustment Prior to the Outcome of Cellect

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The term of a U.S. utility patent extends 20 years from the date of priority filing. However, the USPTO provides a guarantee of “prompt patent and trademark office response” that may allow the term to extend beyond the 20...more

Fenwick & West LLP

Director Review in Recent Patent Cases: Focus on Substantive Issues

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Recent cases show the U.S. Patent and Trademark Office director's interest in using director review to address substantive issues like obviousness, not just procedural matters or changes in the law. Grants in these cases,...more

Goodwin

Issue 45: PTAB Trial Tracker

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In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Erise IP

Eye on IPRs, August 2024: Federal Circuit Rules on Arguments Not Raised in Request for Rehearing, USPTO Director’s Potential...

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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 Addresses Waiver of Argument Not Raised in Request for...more

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

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

Foley Hoag LLP

Patent Term Adjustment and ODP: USPTO Defends Federal Circuit's Cellect Decision

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In December 2021, patent practice was upended by four related United States Patent and Trademark Office (USPTO) Patent Trial & Appeal Board (PTAB) decisions holding that patents subject to statutory Patent Term Adjustment...more

Jones Day

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more

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