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Expert Testimony Extrinsic Evidence

McDermott Will & Emery

Bad Connection: Claim Construction Argument without Explanation Given No Weight

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed...more

McDermott Will & Emery

Game Reset: Extrinsic Evidence Can’t Limit Claim Scope Beyond Scope Based on Unambiguous Intrinsic Evidence

The US Court of Appeals for the Federal Circuit reversed a district court’s grant of summary judgment of noninfringement after concluding that the district court erred by relying on expert testimony to construe a claim term...more

McDonnell Boehnen Hulbert & Berghoff LLP

ImmunoGen, Inc. v. Hirshfeld (Fed. Cir. 2022)

One of the casualties of the Leahy-Smith America Invents Act in 2012 was 35 U.S.C. § 145, which had provided recourse to U.S. District Courts for U.S. patent applicants disgruntled with a determination of unpatentability...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Upholds Application of Dedication-Disclosure Doctrine at the Pleading Stage

On May 8, 2020, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine in granting a motion for judgment on the pleadings in Eagle Pharmaceuticals...more

Jones Day

Even Unrebutted Experts Need To Do More Than Make Conclusory Assertions

Jones Day on

In Diebold Nixdorf, Inc. v. ITC, the Federal Circuit reversed the ITC’s finding of a Section 337 violation based on the ITC’s reliance on unrebutted expert testimony. Diebold, No. 17-2553 (Fed. Cir. Aug. 15, 2018). The case...more

Proskauer - New England IP Blog

Court Bounces Untimely Extrinsic Evidence in Claim Construction Phase

In order to carry out the “just, speedy, and inexpensive determination” of the cases before them, courts rely on scheduling orders to ensure that cases move forward in a timely and efficient manner. In patent cases, where...more

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