5 Key Takeaways | Making Sense of §102 Public Use and On Sale Bars to Patentability
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
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
The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision because it failed to resolve fundamental testimonial conflict relating to inventive contribution and complete...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
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
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems...more
Although the Federal Circuit has analyzed the qualifications of prior art printed publications since its inception, the precise standards for public accessibility have become dramatically more important under PTAB...more
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
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more
Federal Circuit Summary - Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California. Summary: A person is a joint inventor of the anticipating...more
Federal Circuit Summaries - Before Newman, Mayer, and Lourie. Appeal from the Patent Trial and Appeal Board. Summary: An application is unpatentable under pre-AIA 35 U.S.C. § 102(f) when the application does not name...more
Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more
In a precedential opinion dated March 14, 2017, the Federal Circuit reversed the PTAB, holding that in finding a claim anticipated under 35 USC § 102, the Board cannot “fill in missing limitations” simply because a skilled...more
Recently, the Court of Appeals for the Federal Circuit decided MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, et al., No. 2016-1243 (Fed. Cir. Feb. 13, 2017). This case highlights the importance of a...more
In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more