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Prior Art Patent Infringement Corporate Counsel

Morgan Lewis

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

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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

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

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

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

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

Jones Day

CAFC: Nearly Identical Reference is Prior Art

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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

Dorsey & Whitney LLP

Federal Circuit Gives a Makeover to $66 Million Judgment Against Beauty Giant

Dorsey & Whitney LLP on

Earlier this month, the U.S. Court of Appeals for the Federal Circuit reversed a $66 million dollar judgment against beauty industry giant L’Oréal for patent infringement, trade secret misappropriation, and a related breach...more

Orrick, Herrington & Sutcliffe LLP

User Manuals, Reverse Engineering Reports, and Other Commercial Documents: When Are They Publicly Accessible?

In Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40, at 23 (PTAB Jan. 23, 2020), the Patent Trial and Appeal Board clarified how a reference tied to a commercial product could qualify as a “printed...more

McDermott Will & Schulte

When Distinguishing Statements May Be Considered Disclaimers of Claim Scope

Addressing disclaimer of claim scope, the US Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment of non-infringement, finding that the patentee clearly and unmistakably disclaimed...more

Faegre Drinker Biddle & Reath LLP

Get It in Writing: Even Arguments Prompted by PTAB Questions Must Be in the Briefings

The Patent Trial and Appeal Board (PTAB) continues to strictly enforce its rule that "parties are not permitted to raise new arguments at oral hearing," including in situations where the "new" arguments are provided as a...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Clarifies Standard for Prior Art in Obviousness Analysis

Earlier this week, the Federal Circuit in Circuit Check Inc. v. QXQ, Inc. clarified the standard by which a reference may be considered prior art for the purposes of an obviousness determination. See No. 2015-1155, Slip. Op....more

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