Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
IP News
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.
In finding that Lettich is entitled to priority of the Lettich Provisional, the examiner and the Board relied on Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) and Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017). Riggs, slip op. at 11. In these cited cases, the Federal Circuit explained that, for a prior art published application to claim benefit of its provisional application’s filing date, the provisional application must provide support for the “claims” of the prior art application. Id. at 12. The challengers in those cases failed to meet the threshold requirement of demonstrating that the provisional application provided adequate support for the claims of the prior art application. Id. at 13 (citing Dynamic Drinkware, 800 F.3d at 1381-82; Amgen, 872 F.3d at 1380)). However, the Federal Circuit in Dynamic Drinkware and Amgen did not address whether it is sufficient for patent challengers (or examiners) to demonstrate written description support for one claim in order to then rely on other portions of the specification for purposes of anticipation or obviousness. Id. (“As such, [the court] did not address the subsequent issue of whether the content of the prior art relied on in the rejection also required written description support in the provisional application.”).
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- 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
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.