News & Analysis as of July 12, 2025

Obviousness

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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 -

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

Irwin IP LLP on 5/1/2025

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

Federal Circuit Limits Reliance on Provisional Priority Date Under Section 102(e)(1)

Fitch, Even, Tabin & Flannery LLP on 4/10/2025

On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to...more

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

Jones Day on 4/9/2025

The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Latest Federal Court Cases: In re: Riggs

Schwabe, Williamson & Wyatt PC on 4/1/2025

In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more

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

Akin Gump Strauss Hauer & Feld LLP on 3/25/2025

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

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2025

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

2024 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/4/2025

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

When Is a Published Patent Application Prior Art?

Dorsey & Whitney LLP on 1/29/2025

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

PTAB/USPTO Update - March 2024

WilmerHale on 3/5/2024

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

Latest Federal Court Cases - December 2023

Schwabe, Williamson & Wyatt PC on 12/5/2023

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

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/20/2023

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

Latest Federal Court Cases - July 2023

Schwabe, Williamson & Wyatt PC on 7/6/2023

Medytox, Inc. v. Galderma S.A., Appeal No. 2022-1165 (Fed. Cir. June 27, 2023) In this week’s Case of the Week, the Federal Circuit upheld an application by the Patent Trial and Appeal Board of its Pilot Program...more

2022 Post-Grant Annual Report

Fish & Richardson on 3/2/2023

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the...more

2022 Design Patents Year in Review: Analysis and Trends: PTAB: Odds of Escaping Challenges Remain Steady for Design Patents,...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/23/2023

In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

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

D. Del.: Plaintiff’s Seeking Broader Construction in District Court Rather Than in Reexamination Does Not Preclude Reexamination...

Akin Gump Strauss Hauer & Feld LLP on 2/7/2023

In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds...more

Last Week In The Federal Circuit (August 22 – August 26): To Appeal Or Not To Appeal, That Is The Question

Morrison & Foerster LLP - Federal Circuitry on 8/31/2022

If you don’t appeal an issue from an adverse judgment, are you going to be bound by the decision on that issue in future cases? This can often be an important question to consider when deciding whether and what issues to...more

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

McDermott Will & Emery on 6/2/2022

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

2021 PTAB Year in Review: Analysis & Trends: Is the Tide Turning on Chemical Patent Challenges at the PTAB?

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/25/2022

The so-called “Lead Compound Analysis” is the primary legal framework for assessing chemical obviousness. Despite the USPTO Patent Trial and Appeal Board’s (PTAB) initial apparent reluctance to operate under this framework,...more

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/11/2022

The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2022

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 patent litigation. In its first...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed....

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/18/2022

SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[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

Qiagen North America Holdings Inc. v. Handylab, Inc. (Fed. Cir. 2021)

McDonnell Boehnen Hulbert & Berghoff LLP on 11/12/2021

The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be...more

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