Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Intellectual PropertyThe Intellectual Property StrategistColumns & Departments

IP News

By Jeff Ginsberg and J. Jay Cho
April 30, 2025

Federal Circuit Examines Written Description Requirements for U.S. Patent Application Publications Used as Prior Art Under Pre-AIA

On March 24, 2025, a Federal Circuit panel consisting of Judges Moore, Stoll, and Cunningham issued a precedential opinion, authored by Judge Stoll, in In re Riggs, No. 2022-1945 (Fed. Cir. Mar. 24, 2025). Appellants in Riggs are the named inventors listed on U.S. Patent Application No. 11/005,678 (the 678 Application). Riggs, slip op. at 2. They appealed, among other rulings, the Patent Trial and Appeal Board’s determination that a published patent application qualified as prior art under pre-AIA 35 U.S.C. §102(e)(1). Id. (The inventor-appellants raised three issues on appeal, one of which was an issue preclusion matter. Riggs, slip op. at 7-10. That issue is not discussed here.) The Federal Circuit vacated and remanded, finding that the Board did an incomplete analysis in determining whether the published application did, in fact, qualify as prior art under §102(e). Id.

During prosecution of the 678 Application, the examiner rejected certain claims under pre-AIA 35 U.S.C. §102(e)(1) as anticipated by U.S. Patent Application Publication No. 2002/0049622 A1 (Lettich), which claims priority to U.S. Provisional Application No. 60/200,035 (the Lettich Provisional). Id. at 5. Lettich qualifies as prior art to the claims of the 678 Application only if it is entitled to the priority date of the Lettich Provisional. See, id. at 10. The Board reasoned that because the Lettich Provisional provides adequate support for claim 1 of Lettich, Lettich is prior art against the claims of the 678 Application. Id. at 11. The Board then sustained the examiner’s anticipation and obviousness rejections. Id. at 2.

This premium content is locked for The Intellectual Property Strategist subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

Use of Deferred Prosecution Agreements In White Collar Investigations Image

This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.

The DOJ's New Parameters for Evaluating Corporate Compliance Programs Image

The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.

CLE Shouldn't Be the Only Mandatory Training for Attorneys Image

Each stage of an attorney's career offers opportunities for a curriculum that addresses both the individual's and the firm's need to drive success.

A defendant in a patent infringement suit may, during discovery and prior to a <i>Markman</i> hearing, compel the plaintiff to produce claim charts, claim constructions, and element-by-element infringement analyses.