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PTAB Should Analyze Patentability Even if Claims Are Indefinite

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Indefinite claims do not preclude patentability analysis at the PTAB....more

Using the Intrinsic Record to Resolve Alice Step One

CARDIONET, LLC v. INFOBIONIC, INC - Before Dyk, Plager, and Stoll. Dyk dissenting in part. Appeal from the District of Massachusetts. Summary: Alice step one is a threshold inquiry that can be resolved by analyzing the...more

Expert Testimony Must Be Tethered to Supporting Evidence

Before Reyna, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board. TQ DELTA, LLC v. CISCO SYSTEMS, INC. Summary: Findings of fact at the PTAB must be supported by substantial evidence, and conclusory expert...more

Evidence from Non-Instituted Grounds Not Permitted in Final Written Decision at PTAB

IN RE: IPR LICENSING, INC., - Before O’Malley, Newman, and Taranto.  Appeal from the Patent Trial and Appeal Board. Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR...more

Missing Component Does Not Preclude a Prior Art Reference from Being a Primary Reference in a Design Case

CAMPBELL SOUP COMPANY v. GAMON PLUS, INC. Before Prost, Newman and Moore. Appeal from the Patent Trial and Appeal Board. Summary: A proper primary reference can have slight differences in design if, in light of overall...more

Finding No Unambiguous Definition in Record, Federal Circuit Applies Plain Meaning to Disputed PTAB Construction

BRADIUM TECHNOLOGIES LLC V. ANDREI IANCU - Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A clear and unambiguous definition of a claim term is required to redefine the term to...more

Lead Compound Analysis Improper When Evaluating a Method of Use of a Compound

NOVARTIS PHAMACEUTICALS CORP V. WEST-WARD PHARMACEUTICALS - Before Stoll, Plager, and Clevenger. Appeal from the United States District Court for the District of Delaware. Summary: When a method of using a prior art...more

Impax Laboratories Inc. v. Lannett Holdings Inc.

Federal Circuit Summaries - Before Lourie, Dyk, and Taranto. Appeal from the District Court for the District of Delaware. Summary: A passing reference in the prior art to a formulation containing the claimed active...more

Anacor Pharmaceuticals, Inc. v. Iancu

Federal Circuit Summaries - Before Reyna, Bryson, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A petitioner in an Inter Partes Review may introduce new evidence not included in its petition if: 1)...more

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