What should in-house counsel be on the lookout for in 2024? As we begin a new year, our attorneys look ahead at intellectual property topics they expect will be trending in 2024. They cover areas incl...
Bio/pharma patents are rarely targeted in inter partes review (IPR) proceedings because their technical vulnerabilities often relate to written description and/or enablement. IPR, of course, is restri...
On September 21, 2023, the Federal Circuit considered an expectation of success argument in the predictable arts as it related to electro-mechanical assemblies. In Elekta Limited v. Zap Surgical Syste...
An article authored by Scott McKeown titled “New Pair of Federal Circuit Precedents Add Wiggle Room for PTAB Petitioners” was published in IAM. In inter partes review (IPR) proceedings, the scope of a...
An article co-authored by Scott McKeown titled “How Agency Activity is Impacting Patent Litigation This Year” was published in Bloomberg Law. In this article, Scott and his co-authors evaluate federal...
An article co-authored by Scott McKeown titled “A New Era at the PTAB? Director Vidal Issues New Guidance on Discretionary Denials of Institution” was published in Westlaw Today, a Thomson Reuters pub...
Under 35 U.S.C. § 311(b), a Petitioner may seek to institute an IPR on grounds that “could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed public...
Section 315(e)(2) states that once a final decision issues in an IPR challenging a claim, the Petitioner “may not assert either in [court or the ITC] that the claim is invalid on any ground that the p...
The Federal Circuit vacated the PTAB’s construction of a claim term, underscoring the principle that proper claim construction may require a close examination of the specification and other available ...
An article written by Libbie DiMarco, “Commission Finds Violation and Affirms No Indefiniteness Where Previous IPR Declaration Undermined Respondents Indefiniteness Positions” was published in the Dec...
Joinder may allow a party to challenge patent claims with an IPR even if the one-year time bar in Section 315(b) would otherwise preclude the party from filing a petition for IPR. In Uniloc 2017 LLC v...
On appeal of a PTAB decision that all claims in a patent on compressing video files were unpatentable, the Federal Circuit clarified two issues. This post considers the second addressed issue – is the...