Contributors: Knobbe Martens Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches by Nima Zargari In Hyatt v. Hirshfeld, Appeal No. 18-2390, the Federal Circuit held that the PTO met its burden to prove prosecution laches for bulk-filed patent applications claiming priority to applications more than six years old.... read more →
Nov
02
Nov
02
Contributors: Akin Gump Strauss Hauer & Feld LLP Failure to Identify Prior Art Disclosure of a Limiting Preamble Dooms IPR Petition by Jonathan James Underwood & Rubén H. Muñoz Patent Trial and Appeal Board, Inter Partes Review, Prior Art May 27, 2021 The Patent Trial and Appeal Board denied... read more →
Nov
02
Contributors: Akin Gump Strauss Hauer & Feld LLP Statements in Form 10-K Lead to Successful Discovery Motion of Product Sales Before PTAB by Jonathan James Underwood & Rubén H. Muñoz Patent Trial and Appeal Board, Inter Partes Review June 14, 2021 Following institution of inter partes review, the Patent... read more →
Nov
02
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a patent law blog – Patentlyo.com ▪ Perjury Can Be Costly - On May 6, 2021, Prof. Dennis Crouch discussed Cap... read more →
Sep
23
Earn up to 16.0 Hours of MCLE, which includes 1.0 Hour of Legal Ethics, 1.0 Hour Competence Issues, 1.0 Hour of Recognition and Elimination of Bias in The Legal Profession and Society at this year's CLA IP Institute. In its 45th year the, the California Lawyers Association Intellectual Property Law... read more →
Aug
04
Contributed by Knobbe Martens Grammar School: District Court Erred in Departing from Claim Language to Adopt Construction that Encompassed All Disclosed Embodiments In Simo Holdings Inc. v. Hong Kong Ucloudlink Network, Appeal No.19-2411, the Federal Circuit held that a claim construction that excludes an embodiment disclosed in the specification... read more →
Aug
04
PTAB: Petitioner Not Obliged to Address Evidence of Object Indicia That is Neither Tethered to the Claim nor Previously Found Persuasive by Jonathan James Underwood & Rubén H. Muñoz, Akin Gump Strauss Hauer & Feld LLP Patent Trial and Appeal Board, Inter Partes Review, Non-Obviousness, America Invents Act March 5,... read more →
Aug
04
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a patent law blog – Patentlyo.com ▪ On April 30, 2021, Prof. Dennis Crouch discussed Bio-Rad Laboratories, Inc. v. ITC, slip... read more →
Mar
14
Non-Disclosure Agreement Controls Ownership of Patents Arising From Confidential Information Received Thereunder In Sionyx LLC v. Hamamatsu Photonics K.K., Appeal No. 19-2359, the Federal Circuit held that a party who discloses confidential information pursuant to an NDA may be entitled to ownership of U.S. and foreign patents filed by the... read more →
Mar
14
Patent Owner Granted Leave in IPR to Seek Correction of Claims Held Indefinite in Parallel District Court Litigation by Rubén H. Muñoz, Akin Gump Strauss Hauer & Feld LLP Patent Trial and Appeal Board, District Court, Inter Partes Review January 29, 2021 The Patent Trial and Appeal Board... read more →