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The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more
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
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more
The Federal Circuit determined that if a company misleads consumers about the nature of a product by making false patent marking claims, it can be held liable under the Lanham Act. False marking claims under the Lanham Act...more
The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission’s (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because products made using...more
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
This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working...more
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
As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more
One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is...more
Medtronic, Inc. et al. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2356, -2358, -2361, -2363, and -2365 (Fed. Cir. May 24, 2023) In this week’s Case of the Week, a split panel of the Federal Circuit considered...more
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
The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by...more
[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
It is well to recall that the battle over inventorship and thus ownership of CRISPR technology is not limited to the parties in the various interferences surrounding the Doudna and Zhang patents and applications (see "CRISPR...more
Ten years ago, on September 16, 2011, the America Invents Act (“AIA”) became law. This article is the second in a multi-part series of articles on the significant changes introduced by the AIA and the results of those...more
Last fall the Patent Trial and Appeal Board, in Interference no. 106,115, granted leave to Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") to file...more
Once a month, we cover an interesting topic. This month, senior associates Richard Goldstucker and Megan Bussey discuss the commercialization of an invention and provide an overview of the "on-sale bar" provision....more
A motion recently filed by US Inventor, Inc. in the United States District Court for the Northern District of California seeks a temporary restraining order and a preliminary injunction to prevent the United States Patent and...more
In IBSA Institut Biochimique v. Teva Pharmaceuticals USA, Inc. a valuable lesson was learned about relying on a translation of a non-English patent application. The IBSA Institut Biochimique (IBSAIB) hired an Italian patent...more
On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an...more
Technology and medical companies around the world are rising to meet the challenges created by the COVID-19 pandemic, in many cases turning to artificial intelligence (“AI”) and super computers in their efforts to develop...more
Last year, Judge Illston gifted patentees with a proverbial lump of coal with her decision in Illumina, Inc. v. Ariosa Diagnostics, Inc. by invalidating on summary judgment claims directed to methods for isolating cell-free...more
The US Court of Appeals for the Federal Circuit affirmed a district court finding that three patent claims were invalid under the on-sale bar but remanded two other patent claims for trial, explaining that the district court...more
In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more