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The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner's 'quotation' letter to a third party, concluding it was a [...]

Highlights The Federal Circuit revisited the conditions under which prior commercial offers for sale can invalidate a patent Application of the on-sale bar requires a fact-intensive inquiry into an alleged [...]

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 [...]