News & Analysis as of

Means-Plus-Function Inter Partes Review (IPR) Proceeding

Morrison & Foerster LLP - Federal Circuitry

Recently in the Federal Circuit: More on Indefiniteness in IPRs

Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. These are claim elements drafted under 35 U.S.C. § 112(f) (or its predecessor...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2022 #4

Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more

Fitch, Even, Tabin & Flannery LLP

Indefiniteness Does Not Necessarily End PTAB’s Patentability Inquiry

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...more

Morrison & Foerster LLP - Federal Circuitry

Last Two Weeks in the Federal Circuit (December 27 - January 7)

The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant).  In this post, we take a look back at how the Court closed out 2021 and...more

McDermott Will & Emery

Improper Claim Construction Requires Partial Remand of Obviousness Determination

The US Court of Appeals for the Federal Circuit issued decisions in two separate inter partes reviews (IPRs), one involving a patent related to radio frequency communication systems and the other involving a patent related to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2022

Intel Corp. v. Qualcomm Inc., Appeal Nos. 2020-1828, -1867 (Fed. Cir. Dec. 28, 2021) - The Federal Circuit issued two precedential decisions this week—both arising from IPRs filed by Intel against patents owned by...more

WilmerHale

CAFC Patent Cases - October 2021

WilmerHale on

Precedential Federal Circuit Opinions KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. [OPINION] (2021-1638, 10/7/21) (Newman, Prost, Chen) - Chen, J. Denying motion for preliminary injunction. Patentee sought to compel...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 26-30): Sua sponte claim construction

The Federal Circuit has its August sitting this week—its last before September’s scheduled return to in-person arguments. Before taking the virtual bench for the final time, the Court issued six opinions last week. Below we...more

Mintz - Intellectual Property Viewpoints

Tip #2 for Avoiding IPR Institution: Focus on a few arguments that will affect all challenged claims

If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial. But that...more

Knobbe Martens

Inventor Removed From Patent May Be Restored Due to Claim Construction

Knobbe Martens on

EGENERA, INC. v. CISCO SYSTEMS, INC. Before Prost, Stoll, and Reyna. Appeal from the United States District Court for the District of Massachusetts. Summary: A patentee that successfully petitioned to correct a patent’s...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. Below we provide our usual weekly...more

Jones Day

Black Box Structure Insufficient for MPF Element

Jones Day on

In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more

Jones Day

Failure to Identify MPF Structure Tanks Petition

Jones Day on

On June 18, 2020, the PTAB denied an IPR petition because the Petitioner failed to sufficiently construe the means-plus-limitations of the challenged claims. Mattersight Corporation (“Mattersight”) owns the challenged...more

McDermott Will & Emery

Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

McDermott Will & Emery on

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2020 #3

PATENT CASE OF THE WEEK - Schwendimann v. Arkwright Advanced Coating, Inc., Appeal Nos. 2018-2416, et al. (Fed. Cir. May 5, 2020) (unsealed May 13, 2020) - In this recently unsealed precedential opinion, the Federal...more

Jones Day

MPF – Corresponding Structure = Trouble For Petitioners

Jones Day on

Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition. Samsung Electronics America, Inc....more

Jones Day

CAFC Holds PTAB May Not Cancel Claims For Indefiniteness In An IPR

Jones Day on

The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more

Foley & Lardner LLP

PTAB Cannot Invalidate Challenged Claims for Indefiniteness in an IPR

Foley & Lardner LLP on

The Federal Circuit definitively rejected arguments to cancel challenged claims for reasons other than anticipation or obviousness in an inter partes review proceeding. In Samsung Electronics America, Inc., v. Prisua...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Addresses Indefiniteness and Mean-Plus-Function Claiming in Inter Partes Review Proceedings at the PTAB

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the...more

McDermott Will & Emery

Sharp Turnaround on Applicability of § 112, ¶6 Analysis

McDermott Will & Emery on

Addressing the applicability of 35 USC § 112, ¶6 to the term “mechanical control assembly,” the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) gave undue weight to the patent’s...more

McDermott Will & Emery

Algorithm Required Where Corresponding Structure to Means-Plus-Function Term Is Computer-Implemented

The US Court of Appeals vacated a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that the disputed means-plus-function term was computer-implemented and therefore required the corresponding structure to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #4

PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

Jones Day on

The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

WilmerHale

Federal Circuit Patent Updates - August 2018

WilmerHale on

Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more

WilmerHale

Federal Circuit Patent Updates - June 2018

WilmerHale on

Impax Laboratories Inc. v. Lannett Holdings Inc. (No. 2017-2020, 6/28/18) (Lourie, Dyk, Taranto) - Lourie, J. Affirming judgment of no invalidity for claims related to nasal spray for treatment of migraine....more

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