David Holman

Recent Federal Circuit decisions have held that, for a published patent application to qualify as §102(e) prior art as of its provisional application filing date, the provisional application must (1) support the relied upon disclosures in the published application and (2) provide §112, first paragraph, support for the claims in the published application. Consistent with the Federal Circuit precedent, the Patent Trial and Appeal Board has applied this §102(e) analysis to both patents and… Show more

Recent Federal Circuit decisions have held that, for a published patent application to qualify as §102(e) prior art as of its provisional application filing date, the provisional application must (1) support the relied upon disclosures in the published application and (2) provide §112, first paragraph, support for the claims in the published application. Consistent with the Federal Circuit precedent, the Patent Trial and Appeal Board has applied this §102(e) analysis to both patents and published patent applications. The U.S. Patent and Trademark Office’s January 2018 updates to the Manual of Patent Examining Procedure, however, seem to provide guidance for examiners that is at odds with the Federal Circuit and PTAB precedent. This article discusses the history of the Wertheim doctrine, Dynamic Drinkware and other recent Federal Circuit decisions, how §102(e) prior art has been treated at the PTAB, and as-yet unanswered questions involving the Wertheim doctrine. Show less

Authored by nearly 70 Sterne Kessler attorneys, who have handled over 600 of the nearly 6,000 proceedings before the Patent Trial and Appeal Board (PTAB). The treatise provides readers with fresh and comprehensive explorations of all aspects of contested patent proceedings before the US Patent & Trademark Office (USPTO), and the interplay with the Administrative Procedures Act (APA), US District Courts, US International Trade Commission (USITC), US Court of Appeals for the Federal Circuit… Show more

Authored by nearly 70 Sterne Kessler attorneys, who have handled over 600 of the nearly 6,000 proceedings before the Patent Trial and Appeal Board (PTAB). The treatise provides readers with fresh and comprehensive explorations of all aspects of contested patent proceedings before the US Patent & Trademark Office (USPTO), and the interplay with the Administrative Procedures Act (APA), US District Courts, US International Trade Commission (USITC), US Court of Appeals for the Federal Circuit (Federal Circuit), complex patent preparation and prosecution strategies before the USPTO, and patent enforcement in other jurisdictions, such as the European Union and the proposed Unified Patent Court. Show less

Now that the inter partes review system is three years old, what effects have the estoppel provisions had on concurrent or subsequent district court litigation?

2011 Fed. Cts. L. Rev. 4 (Student Works Issue)

Additional authors: YA Hannun YA, S Rubinchik, Z Szulc, TE Keane, M Tavassoli, JS Norris JS.

Additional author: JS Norris

Additional authors: Dong JY, Bielawska A, Hannun YA, Norris JS.

Additional authors: Norris K, L. Obeid, Rubinchik S, Tavassoli M, Tomlinson S, Dong J, Voelkel-Johnson C, Liu X.

Additional authors: Swain BM, Hart MK, Pratt WD, Dong JY.

Additional authors: Keane TE, Tavassoli M, Hannun YA, Norris JS.

Additional authors: Tavassoli M, Norris JS

Now that the inter partes review system is three years old, what effects have the estoppel provisions had on concurrent or subsequent district court litigation?