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To Limit or Not to Limit: What Is the Basis of Your Prior Art Distinction During Prosecution?

VECTURA LIMITED v. GLAXOSMITHKLINE LLC - Before Prost, Bryson, and Wallach. Appeal from the United States District Court for the District of Delaware Summary: Distinguishing prior art based on the structure of the...more

The Mere Presence of Patent Issues in a Contract Dispute Does Not Create Federal Jurisdiction

ANTENNASYS, INC. v. AQYR TECHNOLOGIES, INC. Before, O’Malley, Bryson, and Reyna. Appeal from the U.S. District Court for the District of New Hampshire - Summary: The Federal Circuit held that claim construction issues...more

A Patentee Cannot Circumvent the Marking Requirement by Proving Separate Infringement of Method Claims

PACKET INTELLIGENCE LLC v. NETSCOUT SYSTEMS, INC. Before Lourie, Reyna, and Hughes. Appeal from U.S. District Court for the Eastern District of Texas - Summary: The defendant’s infringement of method claims through...more

Publication Does Not Necessarily Defeat Joint Inventorship

DANA-FARBER CANCER INSTITUTE v. ONO PHARMACEUTICAL CO., LTD. Before Newman, Lourie, and Stoll. Appeal from the U.S. District Court for the District of Massachusetts - Summary: An individual who contributes “significant...more

The Federal Circuit May Not Award Attorney Fees for Work Performed During an IPR

AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC - Before Dyk, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: While the Federal Circuit may be able to award fees under Section 285 for work...more

IPR Petitioners May Not Raise Appointments Clause Challenges Under Arthrex

CIENA CORPORATION v. OYSTER OPTICS, LLC - Before Moore, O’Malley, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Affirmatively petitioning for IPR waives the petitioner’s Appointments Clause...more

Finite Methods as a Ground for Obviousness

UBER TECHNOLOGIES, INC. v. X ONE, INC. Before Prost, Dyk, and Wallach. Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Because a mapping technique must be performed on either a...more

Patent Owners Cannot Sue the Government for Patent Infringement as a Fifth Amendment Taking

GOLDEN v. U.S. Before O’Malley, Mayer, and Wallach. Appeal from the United States Court of Federal Claims. Summary: (1) Patent infringement claims against the government must be brought under 28 U.S. § 1498, not as a Fifth...more

Do Not Bank on a Bank Not Being a “Person” Under the AIA

BOZEMAN FINANCIAL LLC V. FEDERAL RESERVE BANK - Before Lourie, Dyk, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Banks that are members of the Federal Reserve System but are operationally distinct...more

Claims Including Computer Speed and Efficiency Improvements May Still Be Ineligible Under Section 101

CUSTOMEDIA TECHNOLOGIES, LLC V. DISH NETWORK CORPORATION, DISH NETWORK LLC. Before Prost, Dyk, and Moore. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Claims...more

A Litigation Position May Be Objectively Unreasonable Even If the Court Denies Summary Judgment

EKO BRANDS, LLC V. ADRIAN RIVERA MAYNEZ ENTERPRISES, INC. ET. AL.  Before Dyk, Reyna, and Hughes. Reyna dissenting in part.  Appeal from the Western District of Washington...more

“Exceptional Case” Findings Must Consider The Full Case

INTELLECTUAL VENTURES I LLC v. TREND MICRO INCORPORATED - Before Dyk, Taranto, and Stoll. Appeal from the Delaware District Court Summary: An exceptional case finding may be based on a single isolated act, but the court...more

New Arguments Presented for the First Time During PTAB Oral Hearings Are Not Always Waived

THE CHAMBERLAIN GROUP, INC. v. ONE WORLD TECHNOLOGIES, INC. Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: New arguments may be raised during PTAB oral hearings so long as they...more

Accused Infringer’s Ornamental Logo May Defeat Design Patent Infringement Claim

COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES  - Before Lourie, Moore, and Stoll. Appeal from the U.S. District Court for Southern District of California. Summary: An accused infringer’s use of ornamental logos...more

Subsequent Examination After RCE and Interference Proceeding Are Not PTO Delay

MAYO FOUNDATION FOR MEDICAL EDUCATION AND RESEARCH v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE - Before: Newman, Lourie, and Dyk -...more

Arguments During Prosecution Can Limit the Scope of a Coined Term with No Ordinary and Customary Meaning

IRIDESCENT NETWORKS, INC. v. AT&T MOBILITY, LLC - Before Prost, Reyna and Taranto. Appeal from the U.S. District Court for the Eastern District of Texas - Iridescent sued AT&T and Ericsson for infringement of a patent...more

Prior Art Must Be Publicly Accessible, Not Actually Accessed

SAMSUNG ELECTRONICS CO., LTD. v. INFOBRIDGE PTE. LTD. Before Newman, Schall, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: A reference must be publicly accessible, not actually accessed, before...more

Federal Circuit Affirms Patent-Ineligibility of Claims Directed to Displaying Financial Information on a Known Device

Before Moore, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to providing additional trading information on a prior art display, without more, are patent-ineligible under 35...more

Omega Patents, LLC v. Calamp Corp.

Before Prost, Dyk, and Wallach. Appeal from the United States District Court for the Middle District of Florida. Summary: Asserting the district court’s claim construction prevented consideration of additional prior art,...more

Univ Of Fl. Res. Found., Inc. v. Gen. Elec. Co. Et Al.

Federal Circuit Summary - Before Prost, Moore, and Wallach. Appeal from the Northern District of Florida. Summary: When a state entity sues for patent infringement, it waives sovereign immunity as to all defenses,...more

Mylan Pharmaceuticals Inc. v. Research Corporation Tech.

Federal Circuit Summary - Before Lourie, Bryson, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision...more

Schlafly v. The Saint Louis Brewery, LLC

Federal Circuit Summary - Before Newman, Mayer, and Stoll. Appeal from the Trademark Trial and Appeal Board. Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary...more

Acceleration Bay, LLC v. Activision Blizzard Inc.

Federal Circuit Summary - Before Prost, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Omitting a transition phrase between the preamble and the body of a claim does not cause terms in the...more

Natural Alternatives Int’l, Inc. v. Iancu

Federal Circuit Summary - Before Prost, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board Summary: Removing the priority claim of one application in a chain can affect the ability of pending and...more

Orexo AB, Orexo US Inc., v. Actavis Elizabeth LLC

Federal Circuit Summary - Before Newman, Hughes, and Stoll. Appeal from the United States District Court for the District of Delaware Summary: Objective indicia of nonobviousness cannot be dismissed merely because all...more

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