News & Analysis as of

Patent Ownership Appeals

McDermott Will & Emery

PTAB MTA Pilot Program to the Rescue

On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more

McDermott Will & Emery

Cellect Your Weapon: Navigating Potential Arguments in the Aftermath of In re Cellect

McDermott Will & Emery on

In In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), the US Court of Appeals for the Federal Circuit held that a later-expiring patent can be invalid for obviousness-type double patenting (ODP) in view of an earlier-expiring,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Amazon’s Patent Evaluation Express (APEX) Program Has Declaratory Judgment Action Risks for Patent Owners

Amazon’s Patent Evaluation Express (APEX) program provides an expedited and low-cost tool for patent owners to stop the sale of infringing products on Amazon’s platform. But low cost does not mean low risk. The U.S. Court of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

McDermott Will & Emery

Legal Lens on the Unified Patent Court | April 2024

McDermott Will & Emery on

The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified Patent...more

McDermott Will & Emery

That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Shaping the PTAB’s Rulemaking and Rule Enforcement...

A trio of cases this past year illustrate a trend of increasing importance of the Patent Office’s rulemaking and enforcement. Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023) The Federal Circuit’s...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023)...

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2024 #2

Dexcom, Inc. v. Abbott Diabetes Care, Inc., Appeal No. 2023-1795 (Fed. Cir. Jan. 3, 2024) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a district court’s denial of DexCom’s motion to...more

Sheppard Mullin Richter & Hampton LLP

Axonics, Inc. v. Medtronic, Inc. Nos. 2022-1532, 2022-1533, (Fed. Cir. August 7, 2023)

This case addresses the ability of a petitioner in an IPR to present new evidence in a reply brief, particularly where the patent owner proposes a new claim construction in its patent owner response....more

Bradley Arant Boult Cummings LLP

Some Touch Up Needed: The Federal Circuit Partially Confirms the PTAB’s View of Analogous Art

In Corephotonics, Ltd. v. Apple Inc., the Federal Circuit partially signed off on Apple’s win before the Patent Trial and Appeal Board (PTAB) invalidating a number of patents owned by Corephotonics relating to dual-aperture...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Preliminary Means Preliminary

The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more

Jones Day

Common Inventorship And Technology Insufficient For 325(d) Denial

Jones Day on

The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Puts the Onus on Patent Owners to Disclaim Patent Term or Face Double-Patenting

On August 28, 2023, the U.S. Court of Appeals for the Federal Circuit, in In re Cellect, Appeal No. 2022-1293, evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made...more

McDermott Will & Emery

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023

In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the...more

Foley & Lardner LLP

Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

Foley & Lardner LLP on

In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a...more

McDermott Will & Emery

New Claim Construction in Patent Owner’s Post-Initiation IPR Response? Sure, Charge Away

McDermott Will & Emery on

Addressing the issue of new claim constructions presented by a patent owner after the institution of inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a petitioner is entitled...more

Sheppard Mullin Richter & Hampton LLP

Parus Holdings, Inc. v. Google LLC, No. 2022-1269, 2022-1270 (Fed. Cir. Jun. 12, 2023)

This case concerns determining the prior art status of certain references in an inter partes review. The Federal Circuit considered whether the Patent Trial and Appeal Board (the “Board”) was correct in declining to consider...more

McDermott Will & Emery

Heart-to-Heart on Reduction to Practice: When It Comes to Testing, How Much Is Enough?

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision that the patent owner successfully demonstrated that the claimed heart catheter invention was conceived and reduced to practice...more

Snell & Wilmer

Federal Circuit Holds Patent Owners Bear IPR Estoppel Burden of Proof

Snell & Wilmer on

The Federal Circuit recently held, for the first time, that patent owners bear the burden of proof for an Inter Partes Review (“IPR”) Estoppel affirmative defense that an alleged infringer failed to include prior art in a...more

Bradley Arant Boult Cummings LLP

Green Light at the Intersection of First Amendment and Patent-Related Speech

Patent owners worry about what they can and cannot publicly say about infringement of their patent rights. Accused infringers may believe that certain public statements by patent owners are actionable on the basis that such...more

McDermott Will & Emery

Free Speech Illuminates Right to Allege Infringement

The US Court of Appeals for the Federal Circuit reversed a district court’s preliminary injunction prohibiting a patent owner from communicating its view that a competitor infringed, finding that the speech restriction was...more

129 Results
 / 
View per page
Page: of 6

"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:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide