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LKQ v. GM: PTAB and Examiner Guidance on Design Patent Obviousness from USPTO

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

Post-Arthrex PTAB Appeals Mostly Moving On From Constitutional Kerfuffle

This is a follow up to our earlier post about the fallout from the Supreme Court’s June 21, 2021 decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal...more

Most Arthrex Challengers Say “No Thanks” To Director Remand

On June 21, 2021, the Supreme Court issued a decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal officer” authority in their final written decisions,...more

JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges [Audio]

The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more

On-Again, Off-Again Inventorship

Deciding who invented patents can be “one of muddiest concepts in the muddy metaphysics of the patent law.” Mueller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972). But identifying who...more

IPR Petitioners Ineligible for Arthrex Relief

On May 5, 2020 the Federal Circuit formally barred petitioners from seeking Arthrex remands. The Court issued a precedential order clarifying that only qualifying patent owners may seek the Arthrex remedy. Petitioners, unlike...more

Verbal Aspect of Claim Limits Design Patent Scope in Curver Luxembourg v. Home Expressions

The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No....more

“Exceptional” IPRs And § 285

Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a...more

ITC Rejects Sofa Design Patent Infringement On Prosecution History Estoppel Grounds

While design patents follow many of the same rules as utility patents, the application of those rules in determining design patent infringement can be less than straightforward. But a recent Initial Determination by ALJ...more

Are Online Videos "Publicly Accessible"?

The decision in HVLP02 LLC v. Oxygen Frog turned on whether or not a YouTube video could qualify as a "printed publication," and therefore constitute prior art for patent purposes. As courts tend to assign the term "printed...more

The PTAB Chats Designs: And Now, for Something Completely Different

On February 1, the PTAB held its first “Boardside Chat” of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents. Not only are such proceedings less common for design patents than...more

Win or Lose: Appellants of PTO Decisions in District Court Must Pay Attorneys' Fees

On June 23, 2017, the Federal Circuit held in NantKwest v. Matal that patent applicants seeking review of a decision from the United States Patent and Trademark Office ("PTO") to the district court must pay the PTO's legal...more

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