Posts Tagged: "prior art"

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday, in part clarifying its precedent on the interpretation of “by others” or “by another” under pre-America Invents Act (AIA) 35 U.S.C. §§ 102(a), (e). The opinion was authored by Judge Linn. Merck Serono appealed two decisions of the Patent Trial and Appeal Board (PTAB) holding claims of Merck’s U.S. Patent Nos. 7,713,947 and 8,377,903 unpatentable in inter partes review (IPR) proceedings brought by Hopewell Pharma Ventures. The Board found the claims unpatentable as obvious over a combination of two prior art references, “Bodor” and “Stelmasiak”.

Today, the U.S. Court of Appeals for the Federal Circuit issued a ruling in American Science and Engineering, Inc. v. Stewart vacating a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated several of American Science and Engineering’s (AS&E) patent claims covering inspection systems using pencil-beam radiation sources. The appellate court faulted the PTAB for not properly articulating how the asserted prior art’s scatter detectors can detect radiation from the claimed pencil-beam configuration.

On Monday, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Jiaxing Super Lighting Electric Appliance v. CH Lighting Technology reversing the Western District of Texas’ judgment as a matter of law (JMOL) that Jiaxing’s patents were not invalid under the on-sale bar, and vacating the jury’s damages verdict. In relevant part, the Federal Circuit held that the district court erred in excluding evidence that prior art light-emitting diode (LED) tubes were on sale prior to the effective filing date of Super Lighting’s patents, prejudicing CH Lighting’s invalidity argument.

In its decision of July 2, 2025, the Enlarged Board of Appeal (EBA) of the European Patent Office in G 1/23 introduced a shift in European patent law’s treatment of publicly available products, especially where their composition is not fully disclosed or reproducible. G 1/23 has broad implications for patent practitioners across all technical fields, as it reshapes the boundaries of what constitutes prior art under the European Patent Convention and affects how publicly available products, product descriptions, and marketing materials, are assessed in determining novelty and inventive step.

To anyone mildly involved in developing intellectual property assets, the title of this article seems patently obvious. Yet, in today’s world of data driven Key Performance Indicators (KPIs), it is all too easy to chase patent filing and issuance counts rather than focus on enduring IP value. Patent metrics alone don’t build value. This guide shows how to build litigation-ready assets.

On Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in In re: Riggs, vacating the Patent Trial and Appeal Board’s (PTAB) decision to sustain an examiner’s patentability rejection following the examiner’s request for rehearing on the priority date of a prior art reference. Expanding on prior Federal Circuit precedent on pre-America Invents Act (AIA) critical reference dates, the appellate court held that the PTAB used an insufficient test for finding that claimed subject matter was disclosed by a non-provisional patent application that only qualified as prior art based on the critical date of an earlier filed provisional.

This week on IPWatchdog Unleashed I speak with my friend Jason Harrier, former Chief Patent Counsel at Capital One and current co-founder and General Counsel of artificial intelligence (AI) company IP Copilot. I started our conversation by asking Harrier about invention harvesting, which I know from many conversations with in-house attorneys is one of the more difficult but critical important aspects of their job. We begin with a simple question: Why is invention harvesting so difficult and why are in-house attorneys always talking about in terms of what they tried in the past, what they are currently trying and what they hope to try in the future, sounding a little like Goldilocks looking for what is just right, but always out of reach.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd. affirming a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated Lynk Lab’s patent claims to alternating current driven LED lights and circuits. In so ruling, the Federal Circuit agreed with the PTAB’s determination that patent applications can be considered prior art printed publications as of the date of their filing, not their publication.

The U.S. Supreme Court on Monday, March 18, denied a petition filed by patent owner Jodi A. Schwendimann asking the Court to review a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that affirmed a Patent Trial and Appeal Board (PTAB) determination that Schwendimann’s patents were obvious. The petition specifically asked the Court to review the CAFC’s holding that Schwendimann’s argument that “justification for selection of a primary reference is a necessary step to guard against hindsight bias for the motivation to combine references” was unsupported by Federal Circuit case law.

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc., reversing the finding of the Patent Trial and Appeal Board (PTAB) that certain operating manuals with limited dissemination and confidentiality restrictions did not qualify as prior art. The Federal Circuit’s decision concluded that the Board misapplied the analysis for meeting the public accessibility standard for a printed publication to qualify as prior art.

In a recent brief to the Patent Trial and Appeal Board (PTAB), Pfizer and BioNTech (Pfizer) told PTAB judges that Moderna’s dismissal of prior art listed in Pfizer’s August 2023 petition for inter partes review (IPR) of Moderna’s patent on mRNA vaccine technology is inconsistent with its declarations to the Food and Drug Administration (FDA) during the drug approval process. According to the brief, when Moderna was seeking approval for its COVID-19 vaccines, the company “candidly represented to the FDA that prior studies for related vaccines…supported an expectation of safety and efficacy. But now, faced with invalidating vaccine prior art…Moderna wrongly casts the same vaccine prior art as irrelevant.” The brief referred to this as a “litigation-driven one-eighty.”

Section 311(b) of the America Invents Act (AIA) provides that a patent can be challenged in an inter partes review (IPR) “only on the basis of prior art consisting of patents or printed publications.” A published U.S. patent application that never issued as a patent can be used as the basis for an IPR challenge because it’s printed and it’s a publication, right? Not so fast.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today affirmed two decisions of the Patent Trial and Appeal Board (PTAB) that invalidated some claims and upheld others of a patent owned by Personal Genomics Taiwan, Inc. Based on the PTAB’s claim construction, which the CAFC agreed with, the decision held that Pacific Biosciences had failed to prove the prior art taught the limitation of the preamble phrase of claim 1 in one inter partes review, (IPR) but did prove a different prior art reference taught the limitation in the other proceeding.

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.