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Dedicated to Excellence in Intellectual Property Law Marshall, Gerstein & Borun provides sophisticated intellectual property advice and legal services…

Marshall Gerstein & Borun LLP | Global, USA | 14 Sep 2019

Artificial Intelligence & the Intellectual Property Landscape

Artificial Intelligence (AI) technology is exploding, and if you think your industry is just starting to see this technology take hold, be sure to…

Marshall Gerstein & Borun LLP | USA | 9 Sep 2019

Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and…

Marshall Gerstein & Borun LLP | USA | 12 Aug 2019

Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the…

Marshall Gerstein & Borun LLP | USA | 5 Aug 2019

A Reference is Publicly Accessible if a Person of Ordinary Skill in the Art Could Access the Reference

In a recent decision vacating the PTAB’s finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the…

Marshall Gerstein & Borun LLP | USA | 29 Jul 2019

Corroboration Required to Prove Earlier Invention Date

As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of…

Marshall Gerstein & Borun LLP | USA | 22 Jul 2019

Federal Circuit Upholds Patent Ineligibility of Dice Game

The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea…

Marshall Gerstein & Borun LLP | USA | 16 Jul 2019

Is the Written Description Requirement a Nose of Wax?

In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law’s written description requirement, under 35 USC § 112…

Marshall Gerstein & Borun LLP | USA | 15 Jul 2019

Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines

PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent…

Marshall Gerstein & Borun LLP | USA | 8 Jul 2019

PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review. In Valve Corp. v…

Marshall Gerstein & Borun LLP | USA | 1 Jul 2019

USPTO to Patent Owners - Don’t Forget About Reexams and Reissues

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding. The Motion to…
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