In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. The challenged framework, derived from two cases, In re Rosen, 673 F.2d...more
A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more
In the weeks preceding a recent Hatch-Waxman bench trial, a district court excluded portions of an expert’s opinion on obviousness that addressed internal documents and inventor testimony concerning the “inventors’ path” to...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more
1/31/2020
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
10/17/2019
/ America Invents Act ,
Claim Construction ,
Claim Limitations ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Section 101 ,
Section 103 ,
Technology
On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent...more
9/24/2018
/ Appeals ,
CRISPR ,
Interference Claims ,
Life Sciences ,
Nonobvious ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard ,
University of California
SUPREME COURT CASES -
U.S. Supreme Court Remands Case to Federal Circuit to Review Patent Under Teva -
On April 20, 2015, the U.S. Supreme Court remanded a case back to the U.S. Court of Appeal for the Federal...more
5/11/2015
/ Appeals ,
Claim Construction ,
Clear Error Standard ,
Frivolous Lawsuits ,
Motions in Limine ,
Patent Infringement ,
Patents ,
Prior Art ,
Remand ,
Rule 11 ,
SCOTUS
Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure -
On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more
10/6/2014
/ Expert Testimony ,
Inequitable Conduct ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Joinder ,
Microsoft ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Target