New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
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
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
In Jodi A. Schwendimann, fka Jodi A. Dalvey, v. Neenah, Inc., Avery Products Corporation, No. 2022-1333, 2022-1334, 2022-1427, 2022-1432 (Fed. Cir. October 6, 2023) (“Opinion”), the case addresses whether there was...more
The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...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
[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
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
VIDSTREAM LLC V. TWITTER, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be...more
It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more
Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more
HVLPO2, LLC v. OXYGEN FROG, LLC - Before Newman, Moore, and Chen. Appeal from the United States District Court for the Northern District of Florida. Summary: It is an abuse of discretion to permit a witness to testify...more
PATENT CASE OF THE WEEK - Persion Pharms. LLC v. Alvogen Malta Operations Ltd., Appeal No. 2018-2361 (Fed. Cir. Dec. 27, 2019) - In this week’s Case of the Week, the Federal Circuit affirmed a district court judgment...more
PERSION PHARMACEUTICALS LLC v. ALVOGEN MALTA OPERATIONS LTD. Before O’Malley, Reyna, and Chen. Appeal from the U.S. District Court for the District of Delaware. Summary: The FDA’s acceptance of safety data for a...more
The US Court of Appeals for the Federal Circuit determined that a Patent Trial and Appeal Board (PTAB) finding regarding motivation to combine based only on conclusory expert testimony was not supported by substantial...more
In a recent precedential decision, TQ Delta, LLC v. Cisco Systems, Inc., the Federal Circuit reversed a pair of USPTO inter partes review proceedings that invalidated all claims of two related U.S. patents because “the...more
The US Court of Appeals for the Federal Circuit vacated and remanded an obviousness determination by the Patent Trial and Appeal Board (PTAB), holding that the PTAB erred in disregarding a factual finding that the petitioner...more
On Thursday of last week in Telefonaktiebolaget LM Ericsson v. TCL Corporation, the Federal Circuit affirmed two Patent Trial and Appeal Board (PTAB) decisions (IPR2015-01584 and IPR2015-01600) finding that a single claim in...more
PATENT CASE OF THE WEEK - PersonalWeb Techs., LLC v. Apple, Inc., Appeal No. 2018-1599 (Fed. Cir. March 8, 2019 - In a second appeal in this inter partes review matter, the Federal Circuit reversed the PTAB’s finding of...more
As previously reported, the Federal Court, in a pair of decisions, granted orders prohibiting Apotex and Teva from marketing their generic o-desmethyl-venlafaxine (ODV) succinate products (Pfizer’s PRISTIQ) until expiry of...more
IPR Petitioner’s Initial Identification of the Real Parties in Interest Is to Be Accepted Unless and Until Disputed by a Patent Owner - In Worlds Inc. v. Bungie, Inc., Appeal Nos. 2017-1481, -1546, -1583, the Federal...more
The Federal Circuit recently affirmed the Patent Trial and Appeal Board’s (“PTAB”) final written decisions finding the claims of Yeda Research and Development Co., Ltd.’s (“Yeda”) U.S. Patent Nos. 8,232,250, 8,399,413, and...more
Federal Circuit Summary - Before Judges Reyna, Bryson, and Stoll. Appeals from the Patent Trial and Appeal Board and the United States District Court for the District of Delaware. Summary: Non-prior art evidence may...more
Broadest Reasonable Interpretation Encompasses All Embodiments in the Absence of Support Specifically Excluding an Embodiment - In Steuben Foods, Inc. v. Nestle USA, Inc., Appeal No. 2017-1290, the Federal Circuit...more
Federal Circuit Summaries - Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: When resolving an obviousness challenge, the PTAB cannot invoke “ordinary creativity” of a skilled...more