Podcast: PTAB Update: New USPTO Director Brings Significant Changes to PTAB
Is The Deck Stacked Against Patent Owners In The PTAB?
Administrative agencies long enjoyed deference from the courts under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Chevron required courts to give leeway to agencies interpreting...more
Patent examiners have a hard job. They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more
Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more
Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the Patent Trial and Appeal Board rejected a patentee’s alleged...more
QUANERGY SYSTEMS, INC. v. VELODYNE LIDAR USA, INC. Before Newman, Lourie, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: Despite applying the standard of broadest reasonable construction, a...more
Many have argued that the PTAB is biased against patent owners, but one has to wonder whether they are taking into account the procedural benefits afforded to patent owners. As Intel experienced in its recent IPR, a...more
In Comcast Cable Communications, LLC v. Promptu Systems Corp., the Federal Circuit held that the plain meaning of the claim phrase “command function” was limited to functions that command an action to be taken. The meaning of...more
In In re: Google Technology Holdings LLC, the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these...more
In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use...more
On January 6, 2021, the United States Patent and Trademark Office (“USPTO”) published a Memorandum that changed the indefiniteness analysis under 35 U.S.C. §112 that the Patent Trial and Appeal Board (“PTAB”) applies in...more
APPLICATION OF NHK/FINTIV ANALYSIS CONTINUES TO EVOLVE - The Board’s application of its precedential NHK and Fintiv decisions to deny petitions based on parallel litigation continues to develop. The Board recently...more
Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change...more
Recently, the Federal Circuit issued a decision in Immunex Corp. v. Sanofi-Aventis U.S. LLC addressing the different claim construction standards used by the Patent Trial and Appeal Board (“PTAB”) (broadest reasonable...more
Expiration of a Patent Does Not Always Trigger Application of Phillips Standard on IPR Appeal - In Immunex Corporation v. Sanofi-Aventis U.S. LLC, Appeal No. 19-1749, the Federal Circuit held that expiration of a patent...more
In the context of Immunex’s patent on IL-4 antibodies, the Federal Circuit says yes. On October 13, 2020, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) final written decision in...more
As previously reported, in February 2019, the Patent Trial and Appeal Board issued final written decisions in two IPR proceedings initiated by Sanofi challenging the U.S. Patent No. 8,679,487 (the ’487 patent) owned by...more
Affirming an invalidity finding by the Patent and Trial Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found that the claims of the now-expired patent should be construed under the broadest reasonable...more
The Plaintiff in Facebook, Inc. v. Duguid—the case that promises to resolve the growing circuit split over the TCPA’s definition of an ATDS—has filed his merits brief in the Supreme Court. Recall that the TCPA defines an...more
ST. JUDE MEDICAL, LLC v. SNYDERS HEART VALVE LLC - Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The broadest reasonable interpretation of a claim must be considered in...more
Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex. In the Federal Circuit, the Court not surprisingly issued a smattering of...more
IMMUNEX CORPORATION v. SANOFI-AVENTIS U.S. LLC - Before Prost, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Expiration of a patent during appeal from IPR does not trigger claim...more
Judge Giles Sutherland Rich's most famous aphorism in patent law is "the name of the game is the claim."* This rubric is important to keep in mind when considering the Patent Trial and Appeal Board's decision on motions...more
MUNCHKIN, INC. V. LUV N’ CARE LTD - Before Dyk, Taranto, and Chen. Appeal from the Central District of California. Summary: when a litigant seeks fees for an exceptional case based on issues that were not fully...more
The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more
One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more