News & Analysis as of

Patent Trial and Appeal Board Priority Patent Claims

Akin Gump Strauss Hauer & Feld LLP

PTAB Permits Submission of Evidence Midstream to Bolster Public Accessibility of References Despite Objections

The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more

AEON Law

Patent Poetry: Federal Circuit Upholds IPR Estoppel Provisions

AEON Law on

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more

Sheppard Mullin Richter & Hampton LLP

PTAB Rulings Shed Light On Quantum Computing Patents

Quantum computing, a field that harnesses quantum physical phenomena such as superposition and entanglement to perform complex computational tasks, is an emerging technology area. The uncertainties regarding the feasibility...more

McDermott Will & Emery

PTO Seeks Permanent Rules Regarding Motion to Amend Practice Before Board

McDermott Will & Emery on

On March 4, 2024, the US Patent & Trademark Office published a Notice of Proposed Rulemaking seeking to revise its Motion to Amend (MTA) pilot program practice in connection with certain America Invents Act (AIA) proceedings....more

AEON Law

Patent Poetry: Federal Circuit Affirms PTAB Based on “Ordinary Meaning”

AEON Law on

The Federal Circuit has affirmed two decisions of the Patent Trial and Appeal Board (PTAB or Board) that upheld some claims of a patent owned by Personal Genomics Taiwan, Inc. (PGI) and invalidated other claims. Pacific...more

Foley & Lardner LLP

USPTO Says Prior Art Date of AIA Patents is Not Limited By Dynamic Drinkware

Foley & Lardner LLP on

When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more

Neal, Gerber & Eisenberg LLP

Client Alert: Federal Circuit Court Affirms Inducement of Patent Claims Found Invalid by PTAB

While direct patent infringement is a strict liability offense, liability for inducing another’s infringement requires an element of intent. Specifically, the party accused of inducement must have known of the patent and...more

AEON Law

Patent Poetry: Federal Circuit: Particle Patent Claims Anticipated

AEON Law on

The Federal Circuit has held that the claims of a “SNALP” patent were inherently anticipated by prior art. In Arbutus Biopharma Corp. v. ModernaTX, Inc., Arbutus appealed a decision in an inter partes proceeding by the Patent...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

McDermott Will & Emery

PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US...more

McDermott Will & Emery

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more

Jones Day

PGR Estoppel Continues to be Broad and Onerous

Jones Day on

An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more

Jones Day

Section 325(d) – Twelfth Time Not A Charm

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This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...more

McDermott Will & Emery

IPR on Written Description? Claims Found Unpatentable Based on Lack of Entitlement to Priority Date

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) ruling, based on a written description analysis, that certain claims were invalid as anticipated by an earlier priority...more

McDonnell Boehnen Hulbert & Berghoff LLP

Meanwhile . . . ToolGen Files Substantive Motion No. 1 in Interference with CVC

Lest we forget, there are two other interferences proceeding before the Patent Trial and Appeal Board, one of which (Interference No. 106,127) names ToolGen as Senior Party and as Junior Party the University of...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Decides Parties' Motions in CRISPR Interference

Having heard oral argument at a hearing held on Monday, May 18th, the Patent Trial and Appeal Board recently entered its decision on these motions in Interference No 106,115 between Senior Party The Broad Institute, Harvard...more

McDermott Will & Emery

No Refunds: Cancellation of Patent Claims in IPR Isn’t a Taking

The US Court of Appeals for the Federal Circuit found that cancellation of a patent in an inter partes review (IPR) proceeding is not a taking and does not grant the patentee any compensable claim against the United...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Patent Owner’s Burden Regarding a Showing of Priority Is Strictly Circumscribed by the Extent of Petitioner’s Challenge in...

A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...more

McDonnell Boehnen Hulbert & Berghoff LLP

CVC Reply No. 2 to Broad's Opposition No. 2 to CVC's Motion No. 2 to Be Accorded Benefit of Priority

March 23rd was the deadline for the parties in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") and Junior Party the...more

Akin Gump Strauss Hauer & Feld LLP

Priority Dispute Is Not Carte Blanche to Challenge Same Patent with Multiple IPR Petitions

A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims. The...more

Jones Day

PTAB Rules Certificate of Correction is Not Retroactive in IPR

Jones Day on

On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Correction to Claim of Priority Has No Impact Following a Final Written Decision in an IPR

A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent’s claim of priority did not apply retroactively in light of an already issued final written...more

McDermott Will & Emery

Only Director May Decide Merits of Certificate of Correction

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Addressing limitations on the role of the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit explained that the PTAB erred in rejecting a patent owner’s request to file a request for a...more

Knobbe Martens

Federal Circuit Review - October 2019

Knobbe Martens on

The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

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