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Patents Patent Prosecution Patent Invalidity

Bradley Arant Boult Cummings LLP

The Federal Circuit Calls for a Replay Allowing Sonos Another Opportunity at Google

The Federal Circuit’s recent decision in Google LLC v. Sonos, Inc. (24-1097) offers a compelling look at the evolving doctrine of prosecution laches, the written description requirement, and the practical realities of patent...more

Wilson Sonsini Goodrich & Rosati

Inventor’s Failure to Provide Material Information to the USPTO Results in an Unenforceable Patent

On August 20, 2025, the U.S. District Court for the District of Delaware (court) found inequitable conduct when Applicant, Lindis Biotech, GMBH (Lindis), relied on data from hastily performed experiments to obtain a patent...more

Knobbe Martens

Deleted Specification Portions Undermine Claim Construction

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FMC Corp. v. Sharda USA, LLC - Before Moore, Chen, and Barnett. Appeal from the Eastern District of Pennsylvania. The district court erred by construing a claim term based on disclosures made in a provisional application and...more

American Conference Institute (ACI)

[Virtual Conference] Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA - October 14th - 30th, 1:00 pm EST

ACI’s virtual Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA equips early-career professionals with the legal and regulatory fluency needed to contribute meaningfully to product strategy and...more

Fenwick & West LLP

Navigating the PTAB’s New Discretionary Denial Landscape: Strategic Shifts for Patent Challenges

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The Patent Trial and Appeal Board (PTAB) has undergone significant changes in how it evaluates patent challenges, creating both opportunities and obstacles for technology and life sciences companies....more

McDonnell Boehnen Hulbert & Berghoff LLP

In re BAC IP B.V. (Fed. Cir. 2025)

A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

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

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more

Procopio, Cory, Hargreaves & Savitch LLP

The Continued Impact on Patent Prosecutors and Litigators of the Federal Circuit’s Expanded Treatment of Means Plus Function...

In a new precedential Federal Circuit decision, Kyocera Senco Industrial Tools Inc. v. ITC, that impacts both patent prosecutors and litigators, the court again demonstrated the reach of its recent expansion of language that...more

Quinn Emanuel

July 2019: Understanding the Unique Features of China’s Rapidly Expanding Patent System

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China is probably now the third most important (after the United States and Germany) venue for patent prosecution and enforcement, and it is critical for companies doing business there to understand how the system works....more

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

PTAB Strategies and Insights - June 2018: How to Survive Post-Grant Proceedings

Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...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

Foley & Lardner LLP

Federal Circuit Finds Regeneron Transgenic Mouse Patent Invalid For Inequitable Conduct With Intent Inferred From Litigation...

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In a 38 page decision with a 19 page dissent by Judge Newman, the Federal Circuit determined that Regeneron’s transgenic mouse patent is unenforceable due to inequitable conduct. The decision was rendered in Regeneron...more

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

Biosimilar Uptake and Patent Litigation in Japan

Biosimilar uptake in Japan has been a bit mixed, but according to experts the volume shares of biosimilars suggests it could be a key market in years to come. The Pharmaceuticals and Medical Devices Agency (PMDA), which is...more

Jones Day

Design Patents at the PTAB?

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In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit:

The big news this week (and it is particularly big news in Tyler and Marshall, Texas) is that the ?Supreme Court rules that a defendant “resides” for purposes of the patent venue statute only ?where the defendant actually ?is...more

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

April 1, 2017 Revision of Chinese Patent Examination Guidelines may be Good News for Patentees

With continued extraordinary growth, including a record number of patent applications filed in a single year[1], the importance of intellectual property rights in China is undeniable. And so, all eyes are on the recent...more

McDonnell Boehnen Hulbert & Berghoff LLP

News from Abroad: Canada's Federal Court Questions No File Wrapper Estoppel on Claim Construction

The Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 rejected the use of extrinsic documents such as file wrappers (patent prosecution histories) for claim construction, on the basis that allowing...more

Knobbe Martens

Federal Circuit Review | July 2015

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Nunc Pro Tunc Assignments Insufficient To Confer Retroactive Standing - In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

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