ArticleThe Chaos Of Too Many RulesThe Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleA Reference Is Publicly Accessible If A Person Of Ordinary Skill In The Art Could Access The ReferenceIn a recent decision vacating the PTAB's finding that a draft standard for video coding emailed to a listserv was not publicly accessible.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleAnnouncing IPO White Paper On Best Practices For Protecting Inventions Relating To Artificial IntelligenceI am excited to announce the publication of the Intellectual Property Owner (IPO)'s white paper on "Protecting Inventions Relating to Artificial Intelligence: Best Practices."United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleEnactment Of The STRONGER Patents Act Would Severely Limit PTAB ProceedingsThe STRONGER (Support Technology & Research for Our Nation's Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleError In Claim Construction Leads To Reversal Of IPR Decision And Cancelation Of ClaimsTwo recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleEstoppel Remains MalleableA few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office's views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleFederal Circuit Dismisses Appeal Where IPR Petitioner Lacked Standing To AppealIn Phigenix, Inc. v. ImmunoGen, Inc., the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant's appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleFederal Circuit Nixes PTAB's Same-Party And New Issue Joinder PrecedentThe Federal Circuit overturned PTAB precedent that broadly allowed joinder under 35 U.S.C. § 315(c).United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleNo Weight For Unsupported Expert Witness TestimonyIn early February 2023, the Patent Office's Director designated as precedential the Patent Trial and Appeal Board's decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticlePatent Office Proposes Increasing AIA Trial FeesThe Patent Office's Director recently notified the Patent Public Advisory Committee (PPAC) of the Office's intent to set or adjust several fees that patent applicants, patent owners...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleShould I Stay Or Should I Go? – Co-Pending IPR And Litigation Can Lead To Discovery ObligationsFighting a war on two fronts is rarely an enviable strategic position. While district court judges do not always grant stays of patent infringement cases until resolution ...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleSufficiency Of Disclosure For Artificial Intelligence Patents – U.S. Case ExampleIn an earlier article, we compared the sufficiency of disclosure for Artificial Intelligence (AI) patents in the U.S. and the European Patent Office (EPO)United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleThe Supreme Court Finds IPR Proceedings ConstitutionalInter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleThe US Patent And Trademark Office's Climate Change Mitigation Pilot ProgramThe US Patent and Trademark Office's Climate Change Mitigation Pilot Program allows inventors, companies, universities, and other non-profit entities to accelerate the patent examination...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleIPR Institution Despite Arbitration Agreement Is Not AppealableOver a thorough dissent by Judge O'Malley, the Federal Circuit determined it lacked jurisdiction to review the Board's decision to institute IPR despite an arbitration agreement between the parties.United StatesLitigation, Mediation & ArbitrationMarshall, Gerstein & Borun LLP
ArticleBoard Decision Grants Motion To Amend With Respect To One Substitute Claim And Denies Motion To Amend With Respect To Other Substitute ClaimThe Board's recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims. United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticlePlay The ClaimMonsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates "[t]he life of a patent solicitor has always been a hard one."United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticlePTAB Updates And Expands The Director Review Process And Offers Transparency In Ex Parte AppealsAfter the Supreme Court's decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials.United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleSatisfying The Duty Of Disclosure In AIA TrialsIn ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP
ArticleThe USPTO's Climate Pilot Fast-Tracks The Patent Process, Presents OpportunitiesThe United States Patent and Trademark Office (USPTO)'s innovative Climate Change Mitigation Pilot Program makes 2024 the prime time for those creating climate-friendly...United StatesIntellectual PropertyMarshall, Gerstein & Borun LLP