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  • Article

    Federal Circuit Vacates Board Obviousness Decision Relying Upon Reference In Non-Instituted Ground For Motivation To Combine

    In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019),...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Federal Circuits Affirms Use Of "Common Sense" In IPRs

    In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Late Payment Of Petition Fee Thwarts IPR

    If a Petitioner does not timely file the required petition fee, an IPR will not be instituted.
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association

    Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal ...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Patent Owner's Optional Preliminary Response Avoids IPR, But Dooms Infringement Action

    Earlier this year, the Federal Circuit held "that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument

    PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal.
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Potentially Poisonous Patents

    Last summer, the Court of Appeals for the Federal Circuit upheld a U.S. Patent and Trademark Office decision, rejecting claims in the In re Cellect, LLC, case due to the doctrine of obviousness...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    PTAB Failed to Properly Apply Test for Printed Publication

    The Federal Circuit vacated and remanded the PTAB's decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not "printed publications."
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    PTAB Judges Weigh In On Best Practices For Ex Parte Appeals

    The PTAB Bar Association's Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations.
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Rule Changes Will Advance A Famous Judge Rich Axiom

    The Patent Office proposed and invited comments on these changes in a May 2018 notice in the Federal Register
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    The Board Is Deciding Ex Parte Appeals Within One Year

    The Patent Trial and Appeal Board recently presented an update on the "Fast-Track Appeals Pilot Program" the Patent Office initiated in July 2020
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    USPTO Request For Comments On AI As An Inventor

    PatentNext Summary: Following the August 2022 Federal Circuit decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), in which the court ruled that artificial intelligence (AI) could not be an inventor by itself, the USPTO has now requested comments regarding AI and inventorship.
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Updates On AI Inventorship: New Zealand, The EPO, And The UK Allow An Artificial Intelligence (AI) Machine To Be Listed As A Joint Inventor Along With At Least One Human Inventor

    I have been monitoring patent application filing around the world that list "DABUS (the "Device for the Autonomous Bootingstraiming of Unified Sentience") as the sole inventor.
    WorldwideIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    "'Onward' And 'Yes': Lessons From Four Decades In IP"

    In Managing Intellectual Property Magazine's ‘Five minutes with' feature, Marshall Gerstein Managing Partner Jeff Sharp shares lessons that have shaped his career and the firm's success...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Evidence Of Secondary Considerations Fails To Establish Nexus To Challenged Claims

    In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in contact with...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Federal Circuit Upholds Patent Ineligibility Of Dice Game

    The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    What Qualifies As Prior Art?

    This blog has previously reported on several PTAB and Federal Circuit decisions concerning what does and does not qualify as prior art:
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    PTAB May Cite New References Not Cited In The IPR Petition

    In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB's reliance on references not included in the original petition did not violate due process...
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    Raiders Of The Lost Art

    In Telefonaktiebolaget LM Ericsson ("Ericsson") v TCL Corporation, ( "TCL"), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019)
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP
  • Article

    PTAB Defines Further Limitation to Sovereign Immunity Defense

    PTABWatch Takeaway: Sovereign immunity is not available to dismiss an IPR challenge where the Patent Owner has filed an infringement action against the Petitioner.
    United StatesIntellectual Property
    Marshall, Gerstein & Borun LLP
    Marshall, Gerstein & Borun LLP

Showing 141–160 of 382 results

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