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Patents Prior Art Appeals

CAFC Finds Harmless Error in USPTO Reliance On Doctrine of Inherency

by Foley & Lardner LLP on

In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO...more

Federal Circuit Review - August 2017

by Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Mere Quantification of the Results of a Known Process is Not Patentable

In Southwire Co. v. Cerro Wire LLC, [2016-2287] (September 8, 2017), the Federal Circuit affirmed the PTAB’s decision in an Inter Partes reexamination that the claims of U.S. Patent No. 7,557,301 on a method of making cable...more

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

Intercontinental v. Kellogg involves a fight between two food industry powerhouses, Kraft and Kellogg, in which a majority of the panel affirms summary judgment of obviousness of a patent directed to a resealable cookie...more

PTAB’s Consideration of Prior Art Needs a Tune Up

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit remanded a case to the Patent Trial and Appeal Board (PTAB) where the PTAB had failed to consider a specific prior art combination and unpatentability argument advanced by the...more

District Court Addresses IPR Estoppel of Nonpetitioned Grounds and Appoints Expert to Determine Whether Skilled Artisan Could Have...

In Oil-Dri Corporates of America v. Nestle Purina Petcare Company, the court recently held that a defendant who has filed a parallel inter partes review (IPR) petition is estopped from raising invalidity grounds in the...more

Federal Circuit Review - July 2017

by Knobbe Martens on

District Court Abused Discretion in Not Finding Case Exceptional - In Rothschild Connected Devices v. Guardian Protection Services, Appeal No. 2016-2521, the Federal Circuit held that a district court abused its discretion...more

The PTAB Reaches Same Determination After Remand Despite Having Construction and Analysis Set Aside

by Knobbe Martens on

On July 28, 2017, the PTAB issued a final written decision holding all claims unpatentable in an IPR after the Fed. Cir. vacated and remanded the PTAB’s previous final written decision. On remand, the PTAB reached the same...more

District Court Finds Estoppel for Non-Petitioned Grounds but not for Dicta

by Jones Day on

Since the Federal Circuit’s decision in Shaw Indus. Grp., Inc. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), district courts have been finding no estoppel in court proceedings for invalidity positions that were...more

Board Was Mixed Up Over Blender Patent

In Homeland Housewares, LLC v. Whirlpool Corp., [2016-1511] (August 4, 2017), the Federal Circuit reversed the PTAB’s determination that Whirlpool’s U.S. Patent No. 7,581,688 relating to a household blender was not...more

Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to...

by Foley & Lardner LLP on

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims...more

PTAB Grants Rare Motion To Amend Patent Claim After Federal Circuit Remand

by Jones Day on

Last year, the Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims in IPR2014-00090, holding that the Board erred by “insist[ing] that the patent owner discuss whether...more

PTAB Grants Contingent Motion to Amend on Remand from Federal Circuit

On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015,...more

PTAB Can Adopt Petitioners’ Arguments Wholesale

by McDermott Will & Emery on

Addressing for the first time the issue of whether the Patent Trial and Appeal Board (PTAB) may rely on an inter partes review (IPR) petitioner’s arguments and adopt its position wholesale, the US Court of Appeals for the...more

Patent Owner Must Receive Notice of References Against Each Challenged Claim

by McDermott Will & Emery on

In remanding a case back to the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit explained that it was procedurally improper for the PTAB to find claims obvious during inter partes review...more

Patentee’s Willful Ignorance, Vexatious Lawsuits Set Off Alarm Bells

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court decision that an infringement case was not exceptional and found that the patentee’s willful ignorance of prior art and commencement of multiple...more

Federal Circuit Thoroughly Reverses District Court Findings of Velcade® Patent Obviousness

On July 17, 2017, the United States Court of Appeals for the Federal Circuit reversed, in a precedential opinion in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., No. 2015-2066 (Fed. Cir. July 17, 2017), a district court...more

Unexpected Results of an Obvious Process are Non-obvious

In Millennium Pharmaceuticals, Inc., v. Sandoz Inc., [2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1109, 2016-1110, 2016-1283, 2016-1762] (July 17, 2017), the Federal Circuit reversed the district court, finding that...more

Rarely Granted Motion to Amend Defeated in the Federal Circuit

by Brinks Gilson & Lione on

In Shinn Fu Co. of Am. v. Tire Hanger Corp., No. 16-2250 (Fed. Cir. 2017), the Federal Circuit reviewed a successful motion to amend granted by the Patent Trial and Appeal Board (“Board”). This appeal arose from an inter...more

“Catch-All” Phrases Insufficient To Give Proper Notice of Grounds for Petition

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on...more

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

In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the...

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed the Board’s decision that claims 1–2, 4–14, and 17–19 of U.S. Patent No. 5,599,758 were obvious, and...more

Pumping Up Exceptional Cases Under the Octane Fitness Standard

A flurry of activity from various courts this past week on “exceptional cases” under Section 285 of the Patent Act provided notable guidance for practitioners and patent owners, with a particular emphasis on the motivation...more

District Court Adopts Narrow Reading of Shaw and Finds that IPR Estoppel Applies to Manuals for Prior Art Products

Last year, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. articulated that a petitioner is not estopped from relying on a ground on which the Patent Trial and Appeal Board (PTAB) declined...more

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