Search

On October 18, 2024, the USPTO's final rule regarding Motion to Amend ('MTA') practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent [...]

Since the enactment of the Leahy-Smith America Invents Act in 2011, only a competitor or the federal government can assert a claim for false patent marking under the Patent Act. [...]

On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice [...]

The America Invents Act gives the U.S. Patent and Trademark Office director authority to stay a reexamination or reissue proceeding, pursuant to Title 35 of the U.S. Code, Section 315(d). [...]

July 28, 2024 US patent law gives defendants a variety of options for challenging patent validity within and outside district court, including through administrative proceedings brought before the USPTO. Yet [...]

Authored by Babak Akhlaghi on September 6, 2024. Celanese International Corporation recently challenged Anhui Jinhe Industrial Co., Ltd. and Jinhe USA LLC at the U.S. International Trade Commission (ITC). The [...]

I.Patentability Requirement A. Prior Art Invalidity 1. Anticipation (§ 102) a. Exception for AIA Patents 35 U.S.C. 102(b)(2)(B) provides that 'prior patent filings by another . . . 'shall not [...]

On August 12, 2024, the Federal Circuit issued its decision in Celanese International Corp. v. International Trade Commission interpreting the scope of the post-Leahy-Smith America Invents Act ('AIA') on-sale bar.1 [...]

The Director of the USPTO initiated sua sponte review of a PTAB panel's decision to impose sanctions based on patentee's conduct during IPR proceedings. The PTAB cancelled all of patentee's [...]

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, 'Celanese') filed a petition before the United States International Trade Commission (the 'ITC'), alleging that Anhui [...]

The Federal Circuit recently affirmed an ITC holding that the AIA's § 102 on-sale bar applies to the sale of a product made according to a secret process when that [...]

On August 12, 2024, the United States Federal Circuit held that the enactment of the America Invents Act did not constitute a foundational change in the on-sale bar provision under [...]

The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission's (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because [...]

Lyon, le 14 décembre 2018 - Une récente décision des juges du Circuit Fédéral aux Etats-Unis a relancé le débat sur la propriété industrielle de la technologie CRISPR CAS9, en [...]

. . . There, the Supreme Court held that 'when Congress reenacted the same [on-sale] language in the AIA, it adopted the earlier judicial construction of that phrase. . . [...]

On August 12, 2024, the Federal Circuit published its decision in Celanese International Corp. et al. v. International Trade Commission. The Federal Circuit concluded that, under the America Invents Act [...]

The PTAB recently updated its Standard Operating Procedure 1 (SOP), which describes the process and guidelines for assigning judges to panels in all jurisdictions of the Board. This blog post [...]

A petitioner may file multiple inter partes review petitions challenging the same patent under the Leahy-Smith America Invents Act. Multiple petitions are generally categorized into two types: serial and parallel. [...]

I am repeating myself over and over: the AIA 2013 can be a blessing for inventors and small companies, especially for those who stay ahead of the curve. I found [...]

The district court in a patent infringement case granted plaintiff's ex parte request to strike defendant's prior use defense under 35 U.S.C. § 273. Because defendant failed to plead the [...]

Despite the promulgation of the American Invents Act (AIA) in 2012, the concept of prior art has basically stayed the same. Section 102 embodies two different concepts. First, the concept [...]

Your long-time client, Quality Structural Parts, has just been sued in the United States District Court for your locality, regarding Quality's recent introduction of its XCELENTTM flanges. Quality's larger competitor, [...]

Patent practitioners continue to navigate the complexities introduced by the America Invents Act (AIA); they focus, however, less on the nuances of pre-AIA provisions. Yet, a recent ruling by the [...]

On March 4, the Federal Circuit, heard oral arguments for Celanese Int'l. v ITC, 22-1827 (Fed. Cir. 2024), a case that may reshape the dynamics between trade secrets and patent [...]

The Federal Circuit held in Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to [...]

The America Invents Act created inter partes review in 2012. Statutory estoppel is one of the features of the statute that balances the interests of patent owners and patent challengers. [...]

The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system without examination. [...]

In SNIPR TECHNOLOGIES LIMITED V. ROCKEFELLER UNIVERSITY, No. 2022-1260 (July 14, 2023) (Chen,* Wallach, and Hughes), a panel of the Court addressed the issue of which patents and patent applications [...]

The Patent Trial and Appeal Board (PTAB) has knocked out all asserted claims from one of the two VLSI Technology LLC patents that Intel was found to infringe just over [...]

The Battle of the Duties: Navigating Confidential Documents and the U.S. Patent Office's Duty of Disclosure Steve Lendaris, Val Svystun Patent attorneys practicing before the U.S. Patent and Trademark Office [...]

Inter partes review ('IPR') proceedings have become a familiar avenue for challenging the validity of a patent since the America Invents Act ('AIA') was passed.1 IPR proceedings allow a petitioner [...]

In 2011, Congress passed the America Invents Act, which established, among other things, a process by which a party could petition the Patent Trial and Appeal Board (PTAB) to review [...]

Apple v. Vidal, 2022-1249 F.4th (Fed. Circ. March 13, 2023) Since 2020, the United States Patent and Trademark Office's (USPTO) has been denying requests for post-grant validity challenges based on [...]

The USPTO has published a long-promised rulemaking proposal that would formalize and build on recent changes at the Patent Trial and Appeal Board (PTAB). That proposal, released on April 21, [...]

The 2011 passage of the America Invents Act (AIA) resulted in a seismic shift in patent litigation and disputes in the United States. The AIA brought with it new post-grant [...]

The U.S. Patent and Trademark Office's recent advance notice of proposed rulemaking for potential reforms to the rules and guidelines for America Invents Act trials was not short on ideas [...]

In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent [...]

The scope and applicability of inter partes review ('IPR') estoppel continues to develop and reshape patent litigation across the country. After a ruling from the Federal Circuit in Apple Inc. [...]

On April 21, the U.S. Patent and Trademark Office (USPTO) published an Advanced Notice of Proposed Rulemaking (ANPRM), based on a Request for Comments (RFC) published in 2020. The ANPRM [...]

Originally Published on January 20, 2023 Supreme Court Seeks Government's Views on Ruling that Broadened IPR Estoppel The US Supreme Court has asked for the government's take on a closely [...]

On March 13, 2023, the Federal Circuit, in Apple Inc. v. Vidal, determined that Apple has standing to challenge the United States Patent and Trademark Office's (USPTO) inter partes review [...]

As many suspected, there has been a sharp decline in discretionary denials since June 2022, when U.S. Patent and Trademark Office Director Kathi Vidal issued new guidance on the Patent [...]

Director Kathi Vidal assumed the role of Director of the U.S. Patent and Trademark Office ('PTO') in April 2022. Prior to her appointment as the director of the PTO, Director [...]

In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because [...]

In Short The Situation: With the calendar officially turned to a new year several significant changes and regulatory initiatives are on the horizon at the Food and Drug Administration ('FDA'). [...]

A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other's patent applications to provoke an interference. [...]

A derivation proceeding is a novel proceeding applicable to claims filed on or after March 16, 2013 (the date these proceedings went into effect), which offers a mechanism for contesting [...]

On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and [...]

The ongoing battle over the proper remedy for Patent Trial and Appeal Board (PTAB) petitioner misconduct took a dramatic turn this past week. On October 4, USPTO Director Kathi Vidal [...]

The Patent Trial and Appeal Board (PTAB) has seen a variety of challenges to the America Invents Act (AIA) review regime since its inception, including some lawsuits in the past [...]