News & Analysis as of

Prior Art Printed Publications Appeals

McDermott Will & Emery

Sliced and Diced: Operating Manuals Are Printed Publications

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The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more

McDermott Will & Emery

IPR Petition Cannot Be Based on Applicant Admitted Prior Art

McDermott Will & Emery on

Addressing the type of prior art that may form the basis of an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit vacated an unpatentability finding based on “applicant admitted prior art”...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Akin Gump Strauss Hauer & Feld LLP

Patent Owner’s Unpatentability Concession in IPR Insufficient to Trigger Estoppel of System Prior Art in District Court

The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more

McDermott Will & Emery

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

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The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you...more

Goodwin

Issue Twenty-Six: 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 monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Sunstein LLP

Fresh is Best and Stale Will Fail: The PTAB Explains Its Logic in Refusing to Institute an IPR

Sunstein LLP on

The Patent Act allows anyone to try to initiate an inter partes review (IPR), which is a proceeding before the Patent Trial and Appeal Board (PTAB) challenging one or more claims of a patent. Any such challenge may be based...more

Knobbe Martens

Publication Shelved in Publicly Accessible Library Was Accessible to the Public and Therefore Available as Prior Art

Knobbe Martens on

TELEFONAKTIEBOLAGET LM ERICSSON v. TCL CORPORATION - Before NEWMAN, LOURIE, and CLEVENGER. Appeal from the Patent Trial and Appeal Board. Summary:  Publications shelved in publicly accessible libraries may be publicly...more

Akin Gump Strauss Hauer & Feld LLP

No Estoppel in District Court on Prior Art that Differs Substantively—and in a Manner Germane to Invalidity—from that Asserted in...

A Central District of California judge has clarified his prior ruling on summary judgment that estoppel under 35 U.S.C. § 315(e)(2) that applies to certain obviousness invalidity grounds raised by Defendants. In the prior...more

Jones Day

Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

Jones Day on

Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding video data. The...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Medtronic, Inc. v. Barry, 891 F.3D 1368...

Although the Federal Circuit has analyzed the qualifications of prior art printed publications since its inception, the precise standards for public accessibility have become dramatically more important under PTAB...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

White & Case LLP

Supreme Court Says America Invents Act Did Not Alter On-Sale Bar

White & Case LLP on

Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #3

PATENT CASE OF THE WEEK - VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) The Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (“PTAB”), which...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Standard for Public Accessibility of Printed Publications; Offers Claim Drafting Tips

The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Sunstein LLP

Section 101 Gains a Toehold in IPRs

Sunstein LLP on

Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more

Knobbe Martens

Jazz v. Amneal: When your FDA Submissions are Prior Art

Knobbe Martens on

On July 13, 2018, the Federal Circuit decided Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, affirming the Patent Trial and Appeal Board (PTAB)’s finding of invalidity of certain claims of seven Orange Book-listed...more

Knobbe Martens

Federal Circuit Review - July 2018

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Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

Knobbe Martens

Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC

Knobbe Martens on

Federal Circuit Summary - Before Newman, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: References were sufficiently accessible to the public to constitute printed publication prior art...more

Knobbe Martens

Medtronic, Inc. v. Barry

Knobbe Martens on

Federal Circuit Summaries - Before Taranto, Plager, and Chen. Appeal from the Patent Trials and Appeals Board. Summary: In determining whether materials distributed at meetings or conferences are reasonably accessible...more

Akin Gump Strauss Hauer & Feld LLP

District Court Adopts Narrow Reading of Shaw and Finds that IPR Estoppel Applies to Manuals for Prior Art Products

Last year, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. articulated that a petitioner is not estopped from relying on a ground on which the Patent Trial and Appeal Board (PTAB) declined...more

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