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Prior Art Section 102 America Invents Act

Haug Partners LLP

Federal Circuit Addresses Two Key Requirements of On-Sale Bar of Pre-AIA Section 102(b)

Haug Partners LLP on

The Federal Circuit’s recent precedential decision in Crown Packaging Technology Inc. v. Belvac Production Machinery, Inc. is noteworthy because it discusses two key requirements of the on-sale bar prong of pre-AIA section...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

A&O Shearman

Federal Circuit Provides Guidance On 35 U.S.C. § 102(b)(2)(B)’s Public Disclosure Exception To Prior Art

A&O Shearman on

In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C....more

McDermott Will & Schulte

Private Sale Means Public Fail

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

McDermott Will & Schulte

Distinguishing Drinkware—Provisional Priority Determined Differently in Pre- and Post-AIA Patents

McDermott Will & Schulte on

In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more

McDermott Will & Schulte

Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)

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

McDermott Will & Schulte

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

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

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

Jones Day

Confidential FDA Communications as Prior Art in Hatch-Waxman Litigation

Jones Day on

The Situation: In a Hatch-Waxman litigation, the claims recite oxymorphone with less than 0.001% of an impurity called 14-hydroxymorphinone. The prior art includes confidential communications from the FDA to oxymorphone...more

Mintz - Intellectual Property Viewpoints

§102(b) Printed Publication: Unrestricted Distribution at a Trade Show

The U.S. Court of Appeals for the Federal Circuit opinion issued on November 1, 2018 clarifies the standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b) and reversed an earlier Patent...more

Kilpatrick

5 KEY TAKEAWAYS: Helsinn v. Teva: The Status of Secret Prior Art and the On-Sale Bar

Kilpatrick on

Kilpatrick Townsend attorneys Justin Krieger and Nicki Kennedy recently spoke at the Kilpatrick Townsend Intellectual Property Seminars on the topic of “Helsinn v. Teva: The Status of Secret Prior Art and the On-Sale Bar.” ...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.

Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”)...more

Jones Day

Are Online Videos "Publicly Accessible"?

Jones Day on

The decision in HVLP02 LLC v. Oxygen Frog turned on whether or not a YouTube video could qualify as a "printed publication," and therefore constitute prior art for patent purposes. As courts tend to assign the term "printed...more

Jones Day

High Court to Hear Helsinn v. Teva, Resolve AIA Secret Sales Question

Jones Day on

On June 25, 2018, the United States Supreme Court agreed to review the Federal Circuit's decision in Helsinn Healthcare v. Teva Pharmaceuticals, No. 17-1229. In Helsinn, the Federal Circuit considered whether the America...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies the On-Sale Bar Under the AIA: No Public Disclosure of the Invention Is Required if the Existence of the...

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that...more

Foley & Lardner LLP

Are Secret Sales Prior Art Under The AIA?

Foley & Lardner LLP on

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit found that a publicly-announced “Supply and Purchase” agreement triggered the on-sale bar under pre-AIA 35 USC § 102(b) and under AIA 35 USC §...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Clarifies the On-Sale Bar under AIA

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA). The on-sale bar in general means that a sale or an offer to sale of...more

WilmerHale

Prior Art: When On Sale Is Not 'On Sale'

WilmerHale on

Pursuant to Section 102 of the Patent Act, the “on-sale” bar can invalidate a patent when the claimed invention has been the subject of a commercial sale or offer for sale, and the invention is ready for patenting. Prior to...more

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