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Commissioner’s Exercise of Vacant Director’s Duties Does Not Violate Appointments Clause

ARTHREX, INC. v. SMITH & NEPHEW, INC. Before Moore, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board. Summary: During vacancies of Director and Deputy Director of the U.S. Patent and Trademark Office,...more

PTAB Should Analyze Patentability Even if Claims Are Indefinite

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Indefinite claims do not preclude patentability analysis at the PTAB....more

A Generic Motivation Is Still a Motivation

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A “generic” motivation to combine that has broad appeal or applicability is not...more

Expert Testimony Must Be Tethered to Supporting Evidence

Before Reyna, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board. TQ DELTA, LLC v. CISCO SYSTEMS, INC. Summary: Findings of fact at the PTAB must be supported by substantial evidence, and conclusory expert...more

Evidence from Non-Instituted Grounds Not Permitted in Final Written Decision at PTAB

IN RE: IPR LICENSING, INC., - Before O’Malley, Newman, and Taranto.  Appeal from the Patent Trial and Appeal Board. Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR...more

Missing Component Does Not Preclude a Prior Art Reference from Being a Primary Reference in a Design Case

CAMPBELL SOUP COMPANY v. GAMON PLUS, INC. Before Prost, Newman and Moore. Appeal from the Patent Trial and Appeal Board. Summary: A proper primary reference can have slight differences in design if, in light of overall...more

State Sovereign Immunity Does Not Bar an IPR

REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION - Before Dyk, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: State sovereign immunity does not apply to IPR proceedings asserted against...more

Federal Circuit Appeal Dismissed Where Party Appealing PTAB Decision Lacked Article III Standing

AVX CORPORATION V. PRESIDIO COMPONENTS, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent and Trial Appeal Board. Summary: Appellants from an IPR decision to the Federal Circuit must have concrete claims...more

Virnetx Inc., v. Apple, Inc.

Federal Circuit Summary - Before Newman, O’Malley, and Chen. Appeal from the PTAB. Summary: Patent Owner Vertnetx Inc. (“Virnetx”) was collaterally estopped from arguing that a reference was not a printed publication...more

Anacor Pharmaceuticals, Inc. v. Iancu

Federal Circuit Summaries - Before Reyna, Bryson, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A petitioner in an Inter Partes Review may introduce new evidence not included in its petition if: 1)...more

Changes to PTAB Practice Proposed by STRONGER Patents Act of 2017

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate by a bipartisan group led by Senator Chris Coons (D-Del.) and co-sponsored...more

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