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America Invents Act › Inventors › Patent Trial and Appeal Board

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Private Sale by Inventor Does Not Trigger Prior Art Exception Under the AIA

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

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The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

McDermott Will & Emery

Private Sale Means Public Fail

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that a private sale of a product embodying the claimed invention did not qualify as a “public disclosure” under 35 U.S.C. §...more

WilmerHale

PTAB/USPTO Update - March 2024

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On February 13, the USPTO issued inventorship guidance for AI-assisted innovations. The guidance, effective as of February 13, 2024, emphasizes that AI-assisted inventions are not categorically unpatentable and the...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): SNIPR Technologies Ltd. v. Rockefeller University, 72...

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

As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more

McDonnell Boehnen Hulbert & Berghoff LLP

SNIPR Technologies Ltd. v. Rockefeller University (Fed. Cir. 2023)

McDonnell Boehnen Hulbert & Berghoff LLP on

One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2023 #3

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Medtronic, Inc. et al. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2356, -2358, -2361, -2363, and -2365 (Fed. Cir. May 24, 2023) In this week’s Case of the Week, a split panel of the Federal Circuit considered...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

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

2021 PTAB Year in Review: Analysis & Trends

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

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

McDonnell Boehnen Hulbert & Berghoff LLP

CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes

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Last fall the Patent Trial and Appeal Board, in Interference no. 106,115, granted leave to Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") to file...more

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

US Inventor, Inc. Moves to Prevent Any New AIA Reviews Until NHK-Fintiv is Corrected

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A motion recently filed by US Inventor, Inc. in the United States District Court for the Northern District of California seeks a temporary restraining order and a preliminary injunction to prevent the United States Patent and...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel

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On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an...more

McDonnell Boehnen Hulbert & Berghoff LLP

Representative Danny K. Davis Introduces ''Inventor Rights Act"

McDonnell Boehnen Hulbert & Berghoff LLP on

Last year, Judge Illston gifted patentees with a proverbial lump of coal with her decision in Illumina, Inc. v. Ariosa Diagnostics, Inc. by invalidating on summary judgment claims directed to methods for isolating cell-free...more

McDermott Will & Emery

A Window into PTAB Derivation Proceedings

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In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more

Jones Day

Andersen: A Window into Derivation Proceedings before the PTAB

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Recently, the PTAB issued its first ever final written decision in a post-AIA derivation proceeding in Andersen Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 57 (PTAB Mar. 20, 2019), finding that...more

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

PTAB Strategies and Insights - December 2018: Federal Circuit Holds No Assignor Estoppel in AIA Proceedings

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

Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more

Fox Rothschild LLP

Federal Circuit: Even The Inventor Can Challenge Patent’s Validity

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Historically, inventors who assign a patent to a company or other entity have been barred from later challenging the patent’s validity under the doctrine of “assignor estoppel.” This common-law doctrine has been in place for...more

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