When Is a Document on the Internet a “Printed Publication?”

Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication”… Read More

Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention i… Read More

PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpreta… Read More

Beware: An Enabling Specification Can Also Enable Prior Art

The Federal Circuit has held that a prior art reference was enabled in part because admissions in an applicant’s own specification explained what would have been known to one of ordinary skill in the art.  In re Morsa, No.… Read More

PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combin… Read More

Usenet Post Qualifies as "Printed Publication" Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No.… Read More

When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research… Read More

Fed. Cir. Affirms Invalidity Findings By E.D. Texas Jury

Claims from four patents were infringed, but invalid as anticipated and obvious, a jury in the Eastern District of Texas found. In an opinion by Chief Judge Rader, the Federal Circuit rejected the patent owner’s challenge to… Read More

Evidence Not Required to Rebut Presumption That Anticipatory Prior Art Is Enabled

The Federal Circuit has clarified a patent applicant’s burden to rebut the presumption that a prior art reference is enabling of allegedly anticipated claims. In re Morsa, No. 2012-1609 (Fed. Cir. April 5, 2013). The court t… Read More

Federal Circuit Holds E-Commerce Claims Obvious

The Federal Circuit has held claims of three e-commerce patents invalid on grounds of obviousness. Soverain Software, LLC v. Newegg, Inc., No. 2011-1009 (Fed. Cir. Jan 22, 2013). The court, in an opinion authored by Judge Newman,… Read More

Upcoming Webinar

Christopher Francis and Charles Bieneman will conduct Part Two of a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements…Register

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