News & Analysis as of

Patent Litigation United States Patent and Trademark Office Prior Art

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

Goodwin

Issue 45: PTAB Trial Tracker

Goodwin on

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

Sunstein LLP

Federal Circuit Upends Obviousness Test for Design Patents, Leaving Uncertainty and Potential Opportunity

Sunstein LLP on

On May 21, 2024, the Federal Circuit upended decades of precedent regarding design patents in its decision LKQ Corporation v. GM Global Technology Operations LLC. Sitting en banc, a panel of Federal Circuit judges overturned...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

Womble Bond Dickinson

Overhaul of the Rosen-Durling Test: A New Era for Design Patent Obviousness

Womble Bond Dickinson on

In the recent case of LKQ Corporation v. GM Global Technology Operations LLC, the en banc (for the first time in five years) Federal Circuit overruled the long-established Rosen-Durling test used for evaluating the...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

Unclean Hands and Inequitable Conduct: Dishonesty Is Not the Best Policy

Knobbe Martens on

Before Reyna, Hughes, and Stark.  Appeal from the Western District of Louisiana. Summary: The district court correctly found unclean hands, but erred by finding no inequitable conduct without addressing the collective weight...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

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

WilmerHale

PTAB/USPTO Update - May 2024

WilmerHale on

On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...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

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

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Goodwin

Issue 44: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Erise IP

Eye on IPRs, March 2024: PTAB’s Claim Construction of Cooling Patent is Hot Issue, SCOTUS Won’t Hear IPR Joinder Challenge

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: Cooling Patent Restored by Federal Circuit Over PTAB’s Claim Construction - ...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

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

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

Jones Day on

In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Fish & Richardson

2023 Post-Grant Annual Report

Fish & Richardson on

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

Jones Day

Proceed With Caution When Using Wayback Machine® Prior Art

Jones Day on

Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. ...more

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

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Fenwick & West LLP

USPTO Doubles Down on Inapplicability of Dynamic Drinkware to AIA Cases in Precedential PTAB Decision

Fenwick & West LLP on

What You Need to Know The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating...more

196 Results
 / 
View per page
Page: of 8

"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