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Appeals Evidence Patent Trial and Appeal Board

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

McDermott Will & Emery

Ordinary Meaning: “Identifying” Doesn’t Mean Detecting; It Means Identifying

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decisions finding one set of challenged claims patentable and another set of challenged claims in the same patent unpatentable. The...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Affirms PTAB’s Ruling of Obviousness for the Colorization of Fabrics

In Jodi A. Schwendimann, fka Jodi A. Dalvey, v. Neenah, Inc., Avery Products Corporation, No. 2022-1333, 2022-1334, 2022-1427, 2022-1432 (Fed. Cir. October 6, 2023) (“Opinion”), the case addresses whether there was...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023 #3

Volvo Penta of the Americas, LLC v. Brunswick Corp., Appeal No. 2022-1765 (Fed. Cir. Aug. 24, 2023) In its only precedential patent case of the week, the Federal Circuit held the Patent Trial and Appeal Board erred in...more

McDermott Will & Emery

Little Weight Given to Expert Declaration That Repeats IPR Petition

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Knobbe Martens

Is Evidence of Generic Industry Skepticism Enough to Preclude a Finding of a Motivation to Combine?

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AURIS HEALTH, INC., v. INTUITIVE SURGICAL OPERATIONS, INC., Before Dyk, Prost, and Reyna. Appeal from the Patent Trial and Appeal Board (PTAB). Summary: Evidence of generic industry skepticism cannot, by itself, form...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2021: Potential Pecuniary Interest In Instituting More AIA Proceedings Not Enough To...

We previously published an article discussing patent owner’s due process challenges based on alleged pecuniary interests of the Office and Administrative Patent Judges instituting cases to meet production goals and increase...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Knobbe Martens

It’s a Date – Twitter Reply Proves Prior Art Publication Date

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VIDSTREAM LLC V. TWITTER, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: The Changing Face of Non-Obviousness

It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more

McDonnell Boehnen Hulbert & Berghoff LLP

Adidas AG v. Nike, Inc. (Fed. Cir. 2020)

Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more

Jones Day

District Courts Find PTAB Statements Constitute Disclaimer

Jones Day on

In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more

McDermott Will & Emery

Unsupported Expert Testimony Isn’t Enough to Establish Motivation to Combine

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The US Court of Appeals for the Federal Circuit determined that a Patent Trial and Appeal Board (PTAB) finding regarding motivation to combine based only on conclusory expert testimony was not supported by substantial...more

McDermott Will & Emery

Travel Trailer Pulls Patent Around Prior Art

McDermott Will & Emery on

In an appeal stemming from the denial of a patent application under § 102(b), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) by holding that the claims’ preambles were claim...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2019: The Board's Reliance on Expert's Conclusory Statements May Not Meet Substantial...

In a recent precedential decision, TQ Delta, LLC v. Cisco Systems, Inc., the Federal Circuit reversed a pair of USPTO inter partes review proceedings that invalidated all claims of two related U.S. patents because “the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

Evidence of Actual Copying Efforts May Be Relevant to Secondary Indicia

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The US Court of Appeals for the Federal Circuit vacated and remanded an obviousness determination by the Patent Trial and Appeal Board (PTAB), holding that the PTAB erred in disregarding a factual finding that the petitioner...more

Bradley Arant Boult Cummings LLP

Federal Circuit Affirms PTAB’s Admission of Late Evidence on Public Accessibility of Prior Art - Intellectual Property News

On Thursday of last week in Telefonaktiebolaget LM Ericsson v. TCL Corporation, the Federal Circuit affirmed two Patent Trial and Appeal Board (PTAB) decisions (IPR2015-01584 and IPR2015-01600) finding that a single claim in...more

Knobbe Martens

PTAB Must Consider Evidence Showing Prior Art Is Analogous to Invention

Knobbe Martens on

AIRBUS S.A.S. v. FIREPASS CORPORATION Before Lourie, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Whether an asserted prior art reference is reasonably pertinent to the particular problem...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019 #2

PATENT CASE OF THE WEEK - Omega Patents, LLC v. CalAmp Corp., Appeal No. 2018-1309 (Fed. Cir. Apr. 8, 2019)- In an appeal from a series of post-trial decisions, the Federal Circuit provided several important opinions. The...more

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