In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board’s findings...more
There have been only a few precedential decisions from the Federal Circuit related to obviousness since spring sprung. While these decisions have produced mixed results for the lower courts, clinical study protocols have held...more
The Federal Circuit has reversed a finding by the Patent Trial and Appeal Board (PTAB or Board) that certain challenged claims of a patent for a method for aligning a laser projector with respect to a work surface are...more
The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more
Axonics petitioned for IPR of two patents owned by Medtronic. The challenged claims relate to a neurostimulation lead and a method for implanting and anchoring the lead. The patents’ “Field of the Invention” section states...more
Volvo Penta appealed from a Board decision finding all of its claims unpatentable as obvious. The claims at issue covered a tractor-type stern drive for a boat. Volvo Penta raised three main issues on appeal, arguing (1) that...more
Zap filed an IPR petition alleging obviousness of a patent owned by Elekta. The petition relied on a combination of two references. The Board found a reason to combine the references and ultimately found obviousness of the...more
In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more
The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability decision, finding that a combination of prior art references only requires an implicit indication of a reasonable...more
Elekta Limited v. Zap Surgical Systems, Inc. Before: Reyna, Stoll, and Stark. Appeal from the Patent Trial and Appeal Board. Summary: Patentee’s failure during prosecution to distinguish relevant art provided support...more
Key Points - On August 24, 2023, a three-judge panel of the 2nd Circuit unanimously held that the syndicated term loans at issue were not “securities” under the test articulated by the Supreme Court in Reves v. Ernst &...more
The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board non-obviousness decision, finding that the context of the proposed combination of prior art in the Board’s obviousness inquiry...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board ruling that method claims reciting a mechanism of action triggered by the co-administration of two known antihypertensive agents were...more
The US Court of Appeals for the Federal Circuit affirmed a district court decision finding that two patents covering enantiomerically pure compositions of the psoriasis drug Otezla® (apremilast) were valid and one patent...more
The US Court of Appeals for the Federal Circuit, addressing the issue of whether certain factual and legal conclusions relating to obviousness were supported by substantial evidence, held that the Patent Trial & Appeal Board...more
Affirming an obviousness decision by the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit explained that the expectation of success need only be reasonable and not absolute. Transtex Inc....more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s (Board) finding that proposed amendments made during an inter partes review (IPR) are valid and proper despite the inclusion of...more
In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...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
The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision finding the challenged claims patentable because the Board impermissibly rested its motivation-to-combine...more
Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., Appeal Nos. 2020-1640, -1641 (Fed. Cir. Apr. 29, 2022) - Our case of the week has a little bit for everyone, including lost profits, reasonable royalties,...more
The Federal Circuit addressed questions of motivation to combine and reasonable expectation of success in finding obviousness as well as when an obviousness determination by the Patent Trial and Appeal Board is supported by...more
SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more