News & Analysis as of

Patent Validity Prior Art Patent Ownership

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

Reexamination and Reissue for Plant Patents: An Underused Avenue for Patent Owner’s to Strengthen Cultivar Protection

As plant innovation moves into a new era—driven by climate adaptation, consumer preferences, and advanced breeding techniques—most attention on plant patents focuses on securing the initial grant. Yet, in rare instances,...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

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

PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more

Mintz - Intellectual Property Viewpoints

Evidence of Bad Faith Patent Prosecution Can Support an Award of Attorney Fees

A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during...more

McDermott Will & Schulte

PTAB Rejects Consideration of New Issues on Remand

McDermott Will & Schulte on

Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand....more

McDermott Will & Schulte

PTAB Refusal to Permit Claim Amendments Remanded

Addressing the standard for granting a motion to amend claims in inter partes review (IPR), the US Court of Appeals for the Federal Circuit rejected a conclusion by the Patent Trial and Appeal Board (PTAB or Board) that the...more

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