News & Analysis as of

United States Patent and Trademark Office Appeals Obviousness

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Erise IP

Eye on IPRs: August 2024

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

Knobbe Martens

Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference...

Knobbe Martens on

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing...more

Goodwin

The Appeals Review Panel’s In Re Xencor Decision: The USPTO Provides Its Position on Written Description and Means-Plus-Function...

Goodwin on

On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...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

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

McDermott Will & Emery

The End Is Not So Near: Patent Term Adjustments Count in Obviousness-Type Double Patenting Determinations

Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023

Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1532, -1533 (Fed. Cir. Aug. 7, 2023) In this week’s case of the week, the Federal Circuit re-affirmed existing precedent that in inter partes review proceedings before...more

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

Federal Circuit to Sit En Banc to Hear LKQ v. GM Case on Obviousness for Design Patents

For the first time in over five years, the US Court of Appeals for the Federal Circuit will be hearing a patent case en banc. The Court has agreed to hear LKQ Corporation v. GM Global Technology Operations LLC, which...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries

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

McDermott Will & Emery

Little Weight Given to Expert Declaration That Repeats IPR Petition

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

McDermott Will & Emery

Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness...more

Knobbe Martens

Raise It or Lose It! The Federal Circuit Will Not Address Obviousness Arguments First Raised by the PTO on Appeal

Knobbe Martens on

In Re Google LLC - Before: Moore, Lourie, and Prost. Appeal from the Patent Trial and Appeal Board. Summary: The PTO’s arguments on appeal did not reflect the record below....more

McDermott Will & Emery

Construing the Construction: Federal Circuit Chips Away at IPR Win

McDermott Will & Emery on

Addressing claim construction issues in inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed an obviousness finding as to some claims...more

McDermott Will & Emery

Claim at Issue Must Be Substantively Allowable to Qualify for PTA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed two district court decisions, finding that a patent owner who only partially prevailed in one of two appeals was not entitled to any additional patent term adjustments...more

AEON Law

Patent Poetry: Typo Can’t Be Used to Prove Obviousness

AEON Law on

The Federal Circuit has held that a transcription error in a prior art document wouldn’t have been relied on by a person of ordinary skill in the art (POSITA) and thus couldn’t be used to prove obviousness....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

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

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

PTAB Strategies and Insights Newsletter: May 2022

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

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

Knobbe Martens

Enforcing a Patent Known to be Invalid Can Trigger Attorneys’ Fees

Knobbe Martens on

ENERGY HEATING, LLC v. HEAT ON-THE-FLY, LLC - Before Moore, Prost, and Stoll.  Appeal from the U.S. District Court for the District of North Dakota. Summary: Enforcing a patent with knowledge that it is invalid can...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #4

Teva Pharms. Int’l GmbH v. Eli Lilly and Co., Appeal Nos. 2020-1747, -1748, -1750 (Fed. Cir. Aug. 16, 2021) - Eli Lilly and Co. v. Teva Pharms. Int’l GmbH, Appeal Nos. 2020-1876, -1877, -1878 (Fed. Cir. Aug. 16, 2021) - ...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Preambles: Limitation or Not?

In Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, the Federal Circuit held that the same preamble limits the scope of the claims in one patent, but does not limit the scope of the claims in another patent. ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

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

Patent Prosecution Tool Kit: The Changing Face of Non-Obviousness

It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more

59 Results
 / 
View per page
Page: of 3

"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