News & Analysis as of

Inter Partes Reexamination

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Written Description Lacking Where Nothing in the Specification Suggests Inventor Contemplated Claimed Invention

In Cisco Systems, Inc. v. Cirrex Systems, LLC, [2016-1143, 2016-1144](May 10, 2017), the Federal Circuit affirmed in part, and reversed in part the Board’s decision in Inter Partes Reexamination of U.S. Patent No. 6,415,082. ...more

Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings. The Court explained...more

You Can Not Claim What you Don’t Possess – Federal Circuit Holds Fiber Optic Claims Invalid under Section 112

On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems,...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers

In In re Affinity Labs of Texas, LLC, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Board’s decision that §317(b) did not bar the reexamination and that the reexamined claims were invalid....more

Estoppel Under 317(b) Always Applies on a Claim by Claim Basis, Just Like the Statute Says

In In Re Affinity Labs of Texas, LLC, [2016-1092, 2016-1172] (May 5, 2017) the Federal Circuit affirmed the Board’s affirmance of a reexamination determination that all of the claims of U.S. Patent No. 7,324,833 was invalid....more

U.S. Supreme Court Eliminates Laches Defense for Damages in Patent Suits

by Knobbe Martens on

The U.S. Supreme Court on Tuesday, March 21, 2017, held in a 7-1 decision that the defense of laches is not available under the Patent Act to bar claims for damages. SCA Hygiene Products Aktiebolag v. First Quality Baby...more

Even in Light of Reexam, Court Declines to Stay Brite-Strike Patent Litigation

For defendants in patent infringement cases, the strategy of filing for reexamination of the patent-in-suit with the U.S. Patent Office is a common tactic to short-circuit costly litigation—as defendants typically request a...more

Beacon Navigation GmbH v. Ford Motor Company

by Dickinson Wright on

Case Name: Beacon Navigation GmbH v. Ford Motor Company - Docket Number: 2:13-cv-11382-PJD-MAR - Date Filed: 3/28/2013 - Judge: Hon. Victoria A. Roberts - Status: Stayed; reassigned 01/07/2016 - On...more

Beacon Navigation GmbH v. Ford Motor Company

by Dickinson Wright on

Case Name: Beacon Navigation GmbH v. Ford Motor Company - Docket Number: 2:13-cv-11381-PJD-MAR - Date Filed: 3/28/2013 - Judge: Hon. Victoria A. Roberts - Status: Stayed 01/07/2016 - On March 28, 2013, Beacon...more

Federal Circuit Reverses PTAB’s Conclusion that Claims Challenged in Reexamination Would Have Been Obvious

Federal Circuit Reverses PTAB’s Conclusion that Claims Challenged in Reexamination Would Have Been Obvious - On August 31, 2016, the Federal Circuit issued a non-precedential opinion reversing a judgment by the Patent...more

Mylan Files Two Petitions for IPR on Genentech’s Herceptin Patent

by Goodwin on

Yesterday, Mylan filed two petitions for inter partes review of Genentech’s U.S. Patent No. 6,407,213. According the petitions, the patent is directed to humanized antibodies, and Mylan expects that Genentech will rely on...more

Janssen v. Celltrion: District Court Invalidates Janssen’s Remicade® Patent on Summary Judgment

by Goodwin on

As we previously reported, the district court in Janssen v. Celltrion (in which U.S. Patent Nos. 6,284,471 and 7,598,083 are at issue) began hearing oral argument on August 16 on Celltrion’s motion for summary judgment that...more

District Court Denies Motion to Lift Stay Even after Federal Circuit Affirms PTAB's Decision Upholding Claims of Patent-in-Suit...

The district court had previously granted a stay pending an inter partes reexamination by the United States Patent and Trademark Office ("PTO") of U.S. Patent No. 6,797,454 (the "'454 patent"). After the PTO affirmed the...more

Patent Office Updates Rules for Post-Grant Proceeding Duty of Candor

by BakerHostetler on

The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As...more

In Determining Whether to Apply Intervening Rights, Courts Must Account for Differences Between Claim Construction Standards -...

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit again reversed a district court’s summary judgment determination (on remand) that liability was precluded by intervening rights and found that district courts must account for...more

Look at the Context, Sometimes “A” means “A”

In In re Varma, [2015-1502, -1667] (March 10, 2016) the Federal Circuit reversed the PTAB’s cancellation of claims of U.S. Patent No. 6,349,291 in two inter partes reexamination proceedings. in one of the proceedings, the...more

Re-Exam Claiming Opposite Enantiomer Not Enough to Invalidate Patent (Cubist Pharmaceuticals, Inc. v. Hospira, Inc., (Fed. Cir....

by McDermott Will & Emery on

The U.S. Court of Appeals for the Federal Circuit affirmed the judgment of the district court regarding the five asserted patents. Cubist Pharmaceuticals, Inc. v. Hospira, Inc., 805 F.3d 1112, 1115 (Fed. Cir. 2015)....more

New Party Has No Cause of Action to Appeal PTAB Decision (Agilent Technologies, Inc. v. Waters Technologies Corp.)

by McDermott Will & Emery on

Addressing the statutory cause of action requirement to appeal a reexamination decision, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal, finding that the appellant was not a third-party requester of the...more

Federal Circuit Backs Finding of Inequitable Conduct in Reexamination of Prosthetics Patent

The Federal Circuit has affirmed a district court’s awarding of attorneys’ fees to Alps South (Alps) based on inequitable conduct by Ohio Willow Wood (OWW) during reexamination of its patent for gel-coated, cushioned socks...more

Specific Specifications: Takeaways From Inphi Patent Case

The patent attorney often faces the problem that broad claims for a class can be rejected when prior art surfaces for one of the members of the class. One strategy is to exclude those members of the class found in the prior...more

Convolve, Inc. v. Compaq Computer Corp. (Fed. Cir. 2016)

Despite Amendments during Reexamination, Intervening Rights Not Found - On February 10, 2016, the Federal Circuit issued an opinion in a case captioned Convolve, Inc., and Massachusetts Institute of Technology v. Compaq...more

Asset Transferee Cannot Appeal Reexamination

by Foley & Lardner LLP on

The Federal Circuit dismissed the appeal in Agilent Technologies, Inc. v. Waters Technologies Corp., because the appellant was not a “third-party requester” dissatisfied with the final decision in an inter partes...more

Inphi v. Netlist: Alternative Features Satisfy the Patent Written Description Requirement for a Negative Claim Limitation

It can be tricky to evaluate written description support under 35 U.S.C. § 112 for negative claim limitations since the support may amount to the absence of a feature from an invention that is described positively with...more

63 Results
|
View per page
Page: of 3
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.