Finnegan – Federal Circuit IP Blog

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Today in Federal Circuit History…

The courthouse that houses the Federal Circuit was dedicated on September 20, 1967. Originally, the building plan called for a courthouse and an office building for White House staff, such that the Dolley Madison House, the…more
 /  Intellectual Property

Federal Circuit Cultivates Criteria for Obviousness Rejection: Rational Underpinning and Articulation Required to Establish Routine Optimization and a Reasonable Expectation of Success

The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decision in In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), because the PTAB “failed to adequately articulate its reasoning,…more
 /  Intellectual Property, Science, Computers, & Technology

Federal Circuit Orders En Banc Rehearing of Decision Awarding USPTO Attorneys’ Fees in District Court Appeals from USPTO

In NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017), a Federal Circuit panel determined that 35 U.S.C. § 145 permits awarding a pro-rata share of the USPTO’s attorneys’ fees as “expenses” incurred while defending § 145…more
 /  Intellectual Property, Science, Computers, & Technology

Spotlight on Upcoming Oral Arguments – September 2017

In this appeal, the Federal Circuit will decide whether a party has standing to participate in an inter partes reexamination proceeding if the original requester is acquired while the reexamination was pending. Knowles argues…more
 /  Intellectual Property, Science, Computers, & Technology

Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the PTAB’s decision that claims directed to a low-noise HVAC system were invalid as obvious. Broad Ocean…more
 /  Intellectual Property, Science, Computers, & Technology

Federal Circuit Affirms Specific Intent to Deceive Based on Discovery Misconduct

In Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346 (Fed. Cir. July 27, 2017), the Federal Circuit affirmed the district court’s decision that the claims of U.S. Patent No. 8,502,018 were unenforceable due to…more
 /  Intellectual Property, Science, Computers, & Technology

Spotlight on Upcoming Oral Arguments – August 2017

Tuesday, August 8, 2017 - EmeraChem Holdings v. Volkswagen Group of America, No. 16-2619, Courtroom 201 - In this appeal from the PTAB, the Court will decide whether the Board erred in adopting a claim construction in its…more
 /  Administrative Law, Intellectual Property, Science, Computers, & Technology

Federal Circuit Remands For Further Consideration of Proper Irreparable Harm Test for Permanent Injunction

In Genband US v. Metaswitch Networks, No 2017-1148 (Fed. Cir. July 10, 2017), the Federal Circuit clarified that a patentee only need show “some connection” between the patent and sales of infringing products to meet the…more
 /  Intellectual Property, Science, Computers, & Technology

Spotlight on Upcoming Oral Arguments – July 2017

This appeal arises from a Northern District of Illinois decision dismissing Nalco’s infringement complaint with prejudice and denying its motion for reconsideration. Nalco argues that the law does not require pleading all…more
 /  Intellectual Property, Science, Computers, & Technology

USPTO Can Receive Its Attorneys’ Fees for Applicant Appeals to District Court

In NantKwest, Inc. v. Matal, No. 2016-1794 (Fed. Cir. June 23, 2017), the Federal Circuit reversed the district court’s denial of the USPTO’s motion for attorneys’ fees, holding that the “expenses” authorized under 35 U.S.C. §…more
 /  Intellectual Property, Science, Computers, & Technology

The Federal Circuit IP Blog Embarks on “The Terrible Twos” and Finds Patent Law Posts More Popular than Procedural Ones

Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test – Section 101 remains a hot topic, specifically as the Federal Circuit finds more claims directed toward computer technology patent-eligible subject…more
 /  Intellectual Property, Science, Computers, & Technology

District Court’s Remand of Case Involving Patent Counterclaims to State Court Is Not Reviewable by Federal Circuit

In Preston v. Nagel, No. 16-1524 (Fed. Cir. Jun. 1, 2017), the Federal Circuit dismissed Plaintiffs’ appeal of a district court’s decision to remand a case involving patent counterclaims to state court because 28 U.S.C. §…more
 /  Intellectual Property, Science, Computers, & Technology

Lack of Jurisdiction Flatlines Pulse’s Appeal

The Federal Circuit in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 16-2006 (May 26, 2017) held that it lacked jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2) to hear an appeal from a district court’s order…more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

Potential Implications of Supreme Court’s Patent Exhaustion Decision Leaves Uncertainty for Patent Owners

In Impression Products v. Lexmark International, No. 15-1189 (S. Ct. May 30, 2017), the Supreme Court reversed the Federal Circuit’s en banc decision that patent owners may enforce post-sale restrictions that are clearly…more
 /  Civil Procedure, Commercial Law & Contracts, Intellectual Property

Spotlight on Upcoming Oral Arguments – June 2017

In this appeal from the PTAB, the Federal Circuit will address whether the Board exceeded its authority in an inter partes review by sua sponte raising a conception/lack of inurement defense on behalf of Petitioner HTC. Patent…more
 /  Intellectual Property, Science, Computers, & Technology
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