In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more
In almost every claim construction, the courts make their claim construction ruling largely based on the intrinsic evidence – the claims, specification and prosecution history. However, the Federal Circuit (CAFC) bucked this...more
The US Court of Appeals for the Federal Circuit determined that the limitation “a pH of 13 or higher” could not be construed using the asserted patents’ intrinsic evidence and therefore remanded to the district court with...more
The Federal Circuit's claim construction gospel set forth in Phillips has been entrenched in the minds of patent litigators for nearly 20 years.1 The intrinsic evidence - the claims, specification, and prosecution history -...more
The US Court of Appeals for the Federal Circuit reiterated that intrinsic evidence trumps extrinsic evidence in determining the meaning of claim terms. Sequoia Technology, LLC v. Dell, Inc. et al., Case Nos. 21-2263; -2264;...more
If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this...more
The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more
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
The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more
On March 16, 2022, the Court of Appeals for the Federal Circuit denied Biogen International GmbH and Biogen MA, Inc.’s (“Biogen”) combined petition for panel rehearing and rehearing en banc in Biogen International GmbH v....more
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
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
Last week, a split Federal Circuit panel reversed a decision invalidating certain computer-aided-design patent claims because the district court used an incorrect indefiniteness standard....more
The United States District Court for the District of Delaware recently held that claims covering methods for evaluating organ transplant rejection are invalid under 35 U.S.C. § 101. The patents at issue disclose methods...more
In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the...more
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
Although things often slow down in Washington in the August heat and humidity, that wasn’t the case this past week for the Federal Circuit. All told, the Court issued 5 precedential opinions and ruled in 17 cases. Below we...more
SEABED GEOSOLUTIONS (US) INC. v. MAGSEIS FF LLC. Before Moore, Linn, and Chen. Appeal from the Patent Trial and Appeal Board. Where a claim term’s meaning is clear from the intrinsic evidence, no extrinsic evidence...more
In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district...more
Last week, we got what may be the last big batch of Federal Circuit opinions of 2020. (In 2019, only six more opinions issued between this time and the end of the year.) Although most of last week’s decisions were issued...more
On September 15, 2020, the U.S. Court of Appeals for the Federal Circuit, in IQASR v. Wendt, found that a district court did not err in its scrutiny of the extrinsic and intrinsic evidence presented to find U.S. Patent No....more
This article is Part II of a study on the patent eligibility of graphical user interfaces. Part I was published yesterday. We continue from where we left off, with overviews of a handful of Federal Circuit § 101 decisions...more
One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding...more
The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The...more
IBSA INSTITUT BIOCHIMIQUE, S.A. V. TEVA PHARMACEUTICALS USA, INC. Before Prost, Reyna, and Hughes. Appeal from the District Court of Delaware - Summary: A term may be indefinite when the proposed construction is not...more