In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), the court addresses whether failure to re-raise arguments in a request for rehearing before the Patent Trial and Appeals Board (“PTAB”) forfeits such arguments on appeal to the Federal Circuit. This case also addresses what an appellant must show to have claim construction arguments considered on the merits on appeal.Continue Reading Federal Circuit Clarifies Waiver Regulations for Rehearings Before the PTAB
In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023), the case addresses the Patent Trial and Appeal Board’s (“PTAB’s”) authority to issue a Final Written Decision in a post grant review (“PGR”) after the prescribed statutory deadline.Continue Reading PTAB’s Authority to Issue a Final Written Decision After a Statutory Deadline
In Baxalta Incorporated v. Genentech, Inc. 2022-1461 (Fed. Cir. September 20, 2023), this case addresses the enablement requirement in view of the Supreme Court’s recent decision in Amgen Inc. v. Sanofi, 598 U.S. 594 (2023).Continue Reading Enabling the “Full Scope” of Claims in View of the Supreme Court’s Decision in Amgen
This case[1] addresses the original patent requirement under 35 U.S.C. § 251 that reissue claims must be directed to the invention disclosed in the original patent.Continue Reading Grilling Up Burgers and Dogs – With a Side of Original Patent Requirement
This case addresses the “skilled and diligent searcher” standard used for establishing Inter Partes Review (“IPR”) estoppel (or lack thereof). In particular, this case establishes: (1) which party bears the burden of proof regarding whether a “skilled and diligent searcher” could have reasonably been expected to discover prior art such that failure to include it in an IPR petition estops the petitioner from raising it in other civil actions under 35 U.S.C. § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover.Continue Reading Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March 31, 2023.Continue Reading 2023 Federal Circuit Case Summaries
On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.
On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.
A recent Federal Circuit case, ABS Global, Inc., v. Cytonome/ST, LLC, answered the interesting question of whether a patentee’s infringement disclaimer can moot a challenger’s appeal of an inter partes review (“IPR”) decision.
Continue Reading Cementing Victory by Accepting Defeat: When Can a Patentee’s Infringement Disclaimer Moot an Appeal of an IPR Decision?