Section 112 › Prior Art
Latest Federal Court Cases - July 2019 #2
by Schwabe, Williamson & Wyatt PC on 7/9/2019
PATENT CASE OF THE WEEK - In re: Global IP Holdings LLC, Appeal No. 2018-1426 (Fed. Cir. July 5, 2019) - The Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board ("PTAB") upholding an...more
PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB
by Sterne, Kessler, Goldstein & Fox P.L.L.C. on 5/28/2019
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court's finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
A Federal Circuit Prescription to Take Away the Pain for Generics - Intellectual Property News
by Bradley Arant Boult Cummings LLP on 5/24/2019
The Federal Circuit recently reversed a lower court's ruling of validity under the § 112 written description requirement effectively opening the door for a number of generic drug manufacturers to enter the market with a...more
Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims
by Jones Day on 2/11/2019
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
Seven Questions for the USPTO Following the Berkheimer Memorandum
by Fenwick & West LLP on 11/5/2018
Hot on the heels of the Federal Circuit's April ruling in Berkheimer v. HP, the U.S. Patent and Trademark Office issued a memorandum that, if adopted as part of the Manual of Patent Examination Procedures, would provide...more
Indefiniteness Again Leads To Unsuccessful IPR Challenge
by Jones Day on 10/19/2018
The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more
PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action
When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more
After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners
The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims "particularly pointing out and distinctly claiming subject matter which the...more
Protecting Artificial Intelligence and Big Data Innovations Through Patents: Functional Claiming
by Jones Day on 4/5/2018
The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more
PTAB Grants Rare Motion To Amend Patent Claim After Federal Circuit Remand
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
PatentsInter Partes Review (IPR) ProceedingPatent Trial and Appeal BoardPatent-Eligible Subject MatterSection 101Section 103Administrative ProcedureSection 102Claim ConstructionIndefinitenessPatent InfringementAppealsCLS Bank v Alice CorpIntellectual Property ProtectionITC