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Patents Obviousness Corporate Counsel

Fish & Richardson

USPTO Limits Use of General Knowledge in IPR Proceedings

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On July 31, the United States Patent and Trademark Office issued a memorandum (“Memo”) announcing that the Office will renew enforcement of 37 C.F.R. § 42.104(b)(4) (“Rule 104(b)(4)”) in inter partes review (IPR) proceedings....more

A&O Shearman

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

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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

Volpe Koenig

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

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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

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...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

Irwin IP LLP

Double Trouble? Some Double Patenting Woes Resolved 

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Allergan USA v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. Aug. 13, 2024) - On August 13, 2024, the Federal Circuit reversed a district court’s decision that a patent was invalid for obviousness-type double...more

MoFo Life Sciences

Federal Circuit Clarifies Scope Of Obviousness-Type Double Patenting In Allergan USA V. MSN Laboratories

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On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024) clarifying the scope of...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Waiver Regulations for Rehearings Before the PTAB

In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), the case addresses whether failure to re-raise arguments in a request for rehearing before the Patent Trial and Appeals Board (“PTAB”) forfeits...more

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”

This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more

Morgan Lewis

Federal Circuit Clarifies Scope and Timing of Collateral Estoppel for Claims Under IPR

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In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more

Mintz - Intellectual Property Viewpoints

A Typo to Remember: Erroneous Patent Number in Terminal Disclaimer Destroys Exclusive Rights

Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more

Vinson & Elkins LLP

Re-“Designing” a New Standard: The Federal Circuit Aligns Obviousness Test for Design and Utility Patents

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In a considerable shift in the law, the Federal Circuit has discarded the long-standing test for determining whether a design patent is invalid as obvious, in favor of the more flexible obviousness test historically applied...more

Morgan Lewis

Breaking Down the USPTO’s Not-So-Obvious Obviousness Guidelines

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently updated its guidance for patent examiners and applicants in determining obviousness under 35 USC § 103, based on the US Supreme Court’s ruling in KSR Int’l Co. v. Teleflex...more

Jones Day

En Banc Federal Circuit Questions Standard for Design Patent Obviousness

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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

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

Smart & Biggar

Canadian Patent Law 2021: A round-up of interesting developments and court decisions

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2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and new takes on central tenets...more

Haug Partners LLP

Failure to Show a Reasonable Expectation of Success Dooms Obviousness Allegations

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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

McDermott Will & Schulte

Even Judges Have a Boss: PTAB Must Sufficiently Articulate its Obviousness Reasoning

Addressing the sufficiency of the Patent Trial & Appeal Board’s (PTAB) justification of its inter partes review (IPR) determination, the US Court of Appeals for the Federal Circuit reversed the PTAB’s obviousness...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...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

BakerHostetler

How Administrative Law Became the Hottest Topic in Patent Disputes at the Federal Circuit

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What comes to mind when you think of “hot topics” in patent law? Subject matter eligibility? Obviousness? Damages? Quietly, administrative law has moved to the top of the list of issues that consume the attention of the Court...more

Fenwick & West LLP

Obviousness, Common Sense and Sensibility: Federal Circuit Ruling Offers Cautionary Tale for Patent Applicants

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The U.S. Supreme Court’s 2007 decision in KSR International v. Teleflex altered the obviousness inquiry under 35 U.S.C. § 103 in determining whether a claimed invention passes muster under the Patent Act. The KSR Court...more

BakerHostetler

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

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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

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

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