News & Analysis as of

America Invents Act Section 102 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 -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends

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

A&O Shearman

Federal Circuit Provides Guidance On 35 U.S.C. § 102(b)(2)(B)’s Public Disclosure Exception To Prior Art

A&O Shearman on

In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C....more

McDermott Will & Emery

Private Sale Means Public Fail

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

McDermott Will & Emery

Distinguishing Drinkware—Provisional Priority Determined Differently in Pre- and Post-AIA Patents

McDermott Will & Emery on

In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more

McDermott Will & Emery

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

Knobbe Martens

Federal Circuit Review - April 2020

Knobbe Martens on

Secret Third-Party Processes May Not Trigger Pre-AIA § 102 Public Knowledge or Use Bars - In Basf Corporation v. SNF Holding Company, Appeal No. 19-1243, the Federal Circuit ruled that a third party’s sale of products...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2020 #2

PATENT CASE OF THE WEEK - BASF Corporation v. SNF Holding Company, Appeal No. 2019-1243 (Fed. Cir. April 8, 2020) - This week’s case of the week concerns issues relating to the “known or used by others in this country,”...more

Jones Day

PTAB Flushes Airplane Lavatory Patent On On-Sale Bar

Jones Day on

On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more

Knobbe Martens

In re VerHoef

Knobbe Martens on

Federal Circuit Summaries - Before Newman, Mayer, and Lourie. Appeal from the Patent Trial and Appeal Board. Summary: An application is unpatentable under pre-AIA 35 U.S.C. § 102(f) when the application does not name...more

Foley & Lardner LLP

Swearing Behind A Reference With Reasonably Continuous Diligence

Foley & Lardner LLP on

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

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