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America Invents Act › Patent Invalidity › Obviousness

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 -
Irwin IP LLP

Cut! GoPro Can’t Keep Cameras Rolling After IPR Estoppel.

Irwin IP LLP on

Contour IP Holdings, LLC, v. GoPro, Inc., Case No. 17-cv-04738-WHO (N.D. Cal. March 24, 2025) - The estoppel provision of the American Invents Act (AIA) (35 U.S.C. § 315(e)(2)) prevents a petitioner in an inter parties...more

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

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Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Dorsey & Whitney LLP

When Is a Published Patent Application Prior Art?

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In a precedential opinion entered on January 14, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”) invalidating claims of a patent on...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2023

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Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more

McDermott Will & Emery

No Extra Life: Harmless Claim Construction Error Does Not Restart Invalidity Challenge

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision, finding that under the harmless error rule, the challenged claims were invalid as obvious even if the Board erred in claim...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

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

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

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

[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

Goodwin

Issue Twenty-Nine: 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

McDermott Will & Emery

Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out

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Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those...more

McDermott Will & Emery

Stuck at the PTAB – Expanding the Scope of Non-Appealable Institution Decisions

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The US Court of Appeals for the Federal Circuit held that a decision by the Patent Trial and Appeal Board (PTAB) as to whether a post grant review petitioner properly disclosed all parties in interest is non-appealable. ESIP...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2020 #2

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PATENT CASE OF THE WEEK - Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020) - Our case of the week concerns issues particular to inter partes review...more

Foley & Lardner LLP

Personalized Cancer Therapy Found Nonobvious

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In OSI Pharmaceuticals, LLC v. Aoptex Inc. (Fed. Cir. 2018-1925, Oct. 4, 2019), the Federal Circuit reversed the Patent Trial and Appeal Board’s (Board) decision that certain claims of US Patent No. 6,900,221 were...more

McDonnell Boehnen Hulbert & Berghoff LLP

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Fed. Cir. 2019)

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Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Celgene Corp. v. Peter (Fed. Cir. 2019)

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The Federal Circuit affirmed a determination by the Patent Trial and Appeal Board (PTAB) that two patents owned by Celgene Corp. were invalid in Celgene Corp. v. Peter decided last week.  In rendering its decision, the Court...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sanofi Mature IP v. Mylan Laboratories Ltd. (Fed. Cir. 2019)

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One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #3

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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

McDermott Will & Emery

Overlapping Ranges Give Rise to Presumption of Obviousness in IPRs

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Addressing obviousness in inter partes reviews (IPRs), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held a patent invalid for obviousness where claim limitations...more

McDermott Will & Emery

Examiner’s Reason for Allowance May Be Sufficient to Show Prosecution Disclaimer

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While affirming a Patent Trial and Appeal Board (PTAB) decision to invalidate a patent as obvious, the US Court of Appeals for the Federal Circuit found that the PTAB incorrectly concluded that an examiner’s statements in a...more

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

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

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In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

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

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

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This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

Mintz - Intellectual Property Viewpoints

Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

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In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

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Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

McDonnell Boehnen Hulbert & Berghoff LLP

Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Fed. Cir. 2016)

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Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents

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One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three...more

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