News & Analysis as of

CAFC Inter Partes Review (IPR) Proceeding

A&O Shearman

Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

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Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Fenwick & West LLP

En banc Hearing Petition Filed on Recent Fed. Circ. Collateral Estoppel Decision

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The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more

A&O Shearman

Standing & Product Development: Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

Dinsmore & Shohl LLP

Estoppel Principles in Patent Office Proceedings

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On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Foley & Lardner LLP

Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

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In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a...more

Irwin IP LLP

CAFC Holds Priority Favors True Trailblazers, Not Maze-Like Paths Through a Forest of Prior Applications: Regents of the...

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The Court of Appeals for the Federal Circuit (“CAFC”) recently upheld a decision of the Patent Trial and Appeal Board (“PTAB”) that found some claims of U.S. Patent 8,815,830 (“the ’830 patent”) unpatentable as anticipated....more

Rothwell, Figg, Ernst & Manbeck, P.C.

Federal Circuit Gives Win for Patent Owners Seeking to Amend Claims at the PTAB

In American National v. Sleep Number Corporation, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision to allow a patent owner to present proposed amended...more

Rothwell, Figg, Ernst & Manbeck, P.C.

In Hunting Titan v. DynaEnergetics, Federal Circuit Affirms Precedential Opinion Panel But Avoids Ruling on a Standard for Sua...

In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In...more

Troutman Pepper

Federal Circuit Clarifies Scope of IPR Estoppel

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Parties filing inter partes review (IPR) petitions should be aware of the estoppel implications on subsequent or parallel proceedings, including litigation pending in U.S. federal district courts. The U.S. Court of Appeals...more

Rothwell, Figg, Ernst & Manbeck, P.C.

In Qualcomm v. Apple, Federal Circuit Rules Out Applicant Admitted Prior Art As the “Basis” for Inter Partes Review

On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”)...more

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

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Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Jones Day

Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row

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The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Supreme Court’s Denial of Apple and Mylan’s Petitions Leaves NHK/Fintiv Rule in Place

On January 18, the Supreme Court denied petitions for writs of certiorari from both Apple and Mylan Laboratories. Each company sought to challenge the NHK/Fintiv framework that was developed by the Patent Trial and Appeal...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Judge O’Malley Dissents from the Majority on the Enforceability of Arbitration Agreements in IPR Proceedings

Last month, in the case In re: MaxPower Semiconductor, Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) dismissed an appeal by MaxPower Semiconductor, Inc. (“MaxPower”) of four determinations to institute inter...more

Foley & Lardner LLP

Arthrex's Fallout - How is the Supreme Court Decision Affecting Appeals?

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The Supreme Court rendered its decision in Arthrex v. Smith & Nephew back in June and now the impact of that decision is becoming more clear. Arthrex had challenged the constitutionality of the appointment of administrative...more

WilmerHale

CAFC Patent Cases - April 2021

WilmerHale on

Precedential Federal Circuit Opinions - ..WI-LAN INC. v. SHARP ELECTRONICS CORPORATION [OPINION]  (2020-1041, April 6, 2021) (DYK, TARANTO, and STOLL) - Dyk, J.  Affirming related district court judgments holding...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Uniloc v. Facebook: Federal Circuit Rules Against a Finding of Estoppel in Joinder

Earlier this month, in the precedential decision Uniloc 2017 LLC v. Facebook Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) on the issue of estoppel (or...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Mixed Result in M&K Holdings v. Samsung Electronics: Federal Circuit Finds Anticipation not Necessarily Inherent in Obviousness...

Earlier this month, in the precedential decision M & K Holdings v. Samsung Electronics Co., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) in finding certain...more

Rothwell, Figg, Ernst & Manbeck, P.C.

ABS Global v. Cytonome/St, LLC: Mootness and Preserving the Argument for Vacatur

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017,...more

Foley & Lardner LLP

Arthrex Amicus Briefs – Novel Arguments for the Court To Consider

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On December 2nd, amicus briefs in support of Smith & Nephew and the United States were filed with the Supreme Court in the Arthrex cases. There were also several amicus briefs filed in support of no party. Previous articles...more

Foley & Lardner LLP

CBM Review: A Postmortem

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Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak...more

Jones Day

The Federal Circuit Closes The (Face)Book On “Same-Party” IPR Joinder

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The Federal Circuit has definitively ruled on the PTAB’s practice of allowing so-called “same-party” IPR joinder. The court held that an IPR petitioner cannot join itself as a party to an existing IPR and cannot add new...more

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