News & Analysis as of

Patent Litigation Prior Art Corporate Counsel

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

Morgan Lewis

A New Line Drawn: Federal Circuit Applies Prosecution History Disclaimer to Design Patents

Morgan Lewis on

The US Court of Appeals for the Federal Circuit recently issued a decision that held for the first time that principles of prosecution history disclaimer apply to design patents, aligning design patent law more closely with...more

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

A&O Shearman on

On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Holds Applicant Admitted Prior Art Cannot Form “Part of the Basis” of an IPR Ground, Reversing a PTAB Win for...

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more

A&O Shearman

Federal Circuit Affirms Patent Trial And Appeal Board Decision, Finding Claims Of Patents Covering CRISPR Guide RNA Technology As...

A&O Shearman on

On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

Volpe Koenig on

Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Mintz - Intellectual Property Viewpoints

The UPC and EPO Divide: Understanding Conflicting Revocation Proceeding Outcomes

With nearly 800 cases adjudicated or pending thus far at the Unified Patent Court (UPC), a possible procedural gap has appeared in the European patent system: no clear legal mechanism currently exists to resolve conflicting...more

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

Jones Day

En Banc Federal Circuit Questions Standard for Design Patent Obviousness

Jones Day on

Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their...more

Morgan Lewis

Federal Circuit Lowers Bar for Proving Design Patent Infringement

Morgan Lewis on

In a much-anticipated opinion that addresses an issue of first impression, the US Court of Appeals for the Federal Circuit narrowed the scope of “comparison prior art”―prior art considered by the fact finder during an...more

Quarles & Brady LLP

Design Patents are Heating Up at the Federal Circuit, Again

Quarles & Brady LLP on

Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear...more

Haug Partners LLP

Federal Circuit Underscores the Importance of Complying With PTAB Procedural Rules in Parus Holdings v. Google

Haug Partners LLP on

The Federal Circuit’s recent precedential decision in Parus Holdings v. Google underscores the importance of complying with the PTAB’s procedural rules in an IPR and the potentially serious consequences of not doing so. The...more

Jones Day

Error Apparent? Federal Circuit Tackles Obvious Errors in Prior Art

Jones Day on

In LG Electronics v. Immervision, the Federal Circuit clarified the standard for evaluating whether a prior art reference includes an obvious typographical error. See 39 F.4th 1364, 1365 (Fed. Cir. 2022). Under this...more

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

2021 PTAB Year in Review: Analysis & Trends

[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

Haug Partners LLP

Failure to Show a Reasonable Expectation of Success Dooms Obviousness Allegations

Haug Partners LLP on

In Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc.,1 the Federal Circuit affirmed the obviousness analysis performed by the Patent Trial and Appeal Board (“PTAB”), which found that Corcept’s patent for methods of...more

Morgan Lewis

Federal Circuit Narrows Scope of Prior Art Available for Design Patents

Morgan Lewis on

The US Court of Appeals for the Federal Circuit’s recent decision on an appeal from the Patent Trial and Appeal Board to limit prior art for design patent applications to only analogous fields may make it easier for...more

Jones Day

CAFC: Nearly Identical Reference is Prior Art

Jones Day on

In the recent precedential Federal Circuit decision Valve Corporation v. Ironburg Inventions Ltd., No. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. Cir. August 17, 2021), the Federal Circuit ruled on an issue that...more

Jones Day

Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

Jones Day on

The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Invalidation of Digital Camera Patent as Ineligible Under § 101

On June 11, in Yanbin Yu, Zhongxuan Zhang. v. Apple Inc., the Federal Circuit issued a decision finding that a claim directed to an improved digital camera was patent-ineligible under 35 U.S.C. § 101. This decision follows...more

Haug Partners LLP

How Different Claim Construction Standards Can Ultimately Determine the Validity of a Patent

Haug Partners LLP on

Recently, the Federal Circuit issued a decision in Immunex Corp. v. Sanofi-Aventis U.S. LLC addressing the different claim construction standards used by the Patent Trial and Appeal Board (“PTAB”) (broadest reasonable...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Inadvertent Mistake in Analysis of Experimental Data that Substantially Impacts Proceeding Cannot be Corrected

The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Ruling Highlights a Petitioner’s Burden for Qualifying an Internet Screenshot as a “Printed Publication”

In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted...more

Miller Canfield

IP Litigation Quarterly Update

Miller Canfield on

Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law. In this first edition covering the first quarter of 2020, the...more

BakerHostetler

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed...

BakerHostetler on

In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC)...more

32 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide