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Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference...

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing...more

Claim Construction When Uniformly Referring to Aspects of an Invention

Chewy, Inc. v. International Business Machines Corporation - Before Moore, Chief Judge, Stoll and Cunningham. Appeal from the United States District Court for the Southern District of New York....more

Weighty Considerations: Objective Indicia of Non-obviousness

Volvo Penta of the Americas, LLC, v. Brunswick Corp. Before Moore, Lourie, and Cunningham.  Appeal from the Patent Trial and Appeal Board. Summary: The Board must consider the combined weight of multiple objective...more

Objective Evidence in Determining Obviousness

MEDTRONIC, INC. v. TELEFLEX INNOVATIONS - Before Moore, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: A close prima facie case of obviousness can be overcome by strong evidence of objective...more

Not So Obvious: Substantial Evidence Review of Factual Issue in an Obviousness Claim

ROKU, INC. v. UNIVERSAL ELECTRONICS, INC.  - Before Newman, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: When an appeal from the PTAB addresses only a factual issue, the substantial...more

It’s Not the Size of the Chamber That Matters, It’s How You Describe It in the Intrinsic Record

GRACE INSTRUMENT INDUS. V. CHANDLER INSTRUMENTS CO. Before Chen, Cunningham, and Stark. Appeal from the United States District Court for the Southern District of Texas. Summary: Terms of degree are not indefinite when...more

Collateral Estoppel Is Applicable in IPRs When the Question of Patentability Is the Same

GOOGLE LLC v. HAMMOND DEVELOPMENT INTERNATIONAL, INC. - Before Moore, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. - Summary: Collateral estoppel applies to IPRs where differences in claims do not...more

A Skilled Artisan Cannot “At Once Envisage” Each Member of a Large Class

MYLAN PHARMACEUTICALS INC. v. MERCK SHARP & DOHME CORP. - Before Lourie, Reyna and Stoll.  Appeal from the Patent Trial and Appeal Board. - Summary: “At once envisage” what is missing cannot fill in the gap to establish...more

“Army of Citation Footnotes Crouching in a Field of Jargon” Fails to Withstand Summary Judgment

Traxcell Techs., LLC v. Sprint Commn’s Co. et al Before Prost, O’Malley, and Stoll.  Appeal from the Eastern District of Texas. Summary:  A patentee’s extensive citations to evidence failed to avoid summary judgment of...more

Controlling Your Own Destiny: Patent Owner Unilaterally Moots Appeal to Preserve Favorable PTAB Determination

ABS GLOBAL, INC. V. CYTONOME/ST, LLC - Before Prost, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A patent owner may moot a petitioner’s appeal of an IPR final written decision of no...more

Federal Circuit Rejects Claim Construction That Contradicts Dependent Claims

BAXALTA INC. V. GENENTECH, INC. Before Moore, Plager, and Wallach. Appeal from the District of Delaware Summary: A district court erred by interpreting a specification’s description of an “antibody” as a definition,...more

Ignoring Antecedent Basis in the Claim Results in Reversal of Patentability Determination

Technical Consumer Prods., Inc. v. Lighting Science Grp Corp. Before Dyk, Chen, and Stoll; Appeal from the P.T.A.B. Summary: A term with a narrow antecedent basis in an open ended claim may allow a wider range of prior...more

Examiner Amendments Can Trigger Prosecution History Estoppel

Amgen, Inc. v. Amneal Pharmas. LLC et al - Before Newman, Lourie, and Taranto.  Appeal from the U.S. District Court for the District of Delaware. Summary: An examiner amendment may give rise to prosecution history...more

PTAB’s Characterization Of Petitioner’s Argument Did Not Introduce New Theory Of Invalidity

ARTHREX, INC. V. SMITH & NEPHEW ET AL. Before Dyk, Chen, and Stoll. Appeal from the U.S. Patent and Trademark Office - Summary: The Board’s invalidity decision does not need to track the exact wording in the IPR...more

Shifting Venue for Patent Infringement Lawsuits

Knobbe Martens attorneys Nicholas Zovko and Brandon Smith co-authored "Shifting Venue for Patent Infringement Lawsuits" for the Orange County Business Journal Intellectual Property Law Supplement. Excerpt: The U.S....more

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