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The Patent Office Need Not Consider Requests for Director Review of IPR Institution Decisions

Summary: The USPTO policy of refusing to consider Requests for Director Rehearing of decisions denying institution of IPR and PGR does not violate the Appointments Clause of the Constitution....more

PTO Director’s Estoppel Decision Ending Reexam Is Subject to Judicial Review

ALARM.COM INC. v. HIRSHFELD - Before Taranto, Chen, and Cunningham. Appeal from the United States District Court for the Eastern District of Virginia. Summary: The Administrative Procedure Act (APA) permits judicial...more

Lack of Written-Description Support for Claimed Ranges Makes Parent Application Prior Art

INDIVIOR UK LIMITED v. DR. REDDY'S LABORATORIES S.A. Before Lourie, Linn, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: Claims of a continuation application were anticipated because they were not...more

Clear Intrinsic Evidence Forecloses Extrinsic Evidence of Special Meaning

SEABED GEOSOLUTIONS (US) INC. v. MAGSEIS FF LLC. Before Moore, Linn, and Chen.  Appeal from the Patent Trial and Appeal Board. Where a claim term’s meaning is clear from the intrinsic evidence, no extrinsic evidence...more

Supreme Court Saves IPRs by Allowing PTO Director to Review Patent Judges’ Decisions

Before the United States Supreme Court.  Majority opinion by Chief Justice Roberts.  On writ of certiorari to the United States Court of Appeals for the Federal Circuit. Summary: A statute preventing the PTO Director from...more

Inventor Removed From Patent May Be Restored Due to Claim Construction

EGENERA, INC. v. CISCO SYSTEMS, INC. Before Prost, Stoll, and Reyna. Appeal from the United States District Court for the District of Massachusetts. Summary: A patentee that successfully petitioned to correct a patent’s...more

Substitute Claims in IPR Are Subject to Section 101 Challenges

UNILOC 2017 LLC v. HULU, LLC - Before O’Malley, Wallach, and Taranto. O’Malley dissenting. Appeal from the Patent Trial and Appeal Board. Summary: The Board did not exceed its statutory authority in an inter partes...more

Federal Circuit Affirms Use of Common Sense for Obviousness Determination

B/E AEROSPACE, INC. v. C&D ZODIAC, INC. Before Lourie, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Common sense may be invoked in obviousness determination if accompanied by reasoned...more

No Specific Threat of Infringement Litigation Needed to Establish Standing for IPR Appeal

ADIDAS AG v. NIKE, INC. Before Moore, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A patent challenger can establish standing to appeal a final written decision in an IPR by showing that...more

U.S. Supreme Court Holds IPR Time Bar Determinations Are Not Appealable

The Decision. On April 20, 2020, the U.S. Supreme Court ruled that decisions by the Patent Trial and Appeal Board (PTAB) to institute inter partes review (IPR) are not appealable, even if such institution decisions may...more

Same-Party and New-Issue Joinder Impermissible in IPRs

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC - Before Prost, Plager, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: An IPR petitioner may not join itself to an earlier IPR in which it was already a...more

Broad Description in Specification Defeats Patent Owner’s Bid for Narrow Construction

BTG INTERNATIONAL LIMITED v. AMNEAL PHARMACEUTICALS LLC - Before Wallach, Moore, and Chen. Consolidated appeals from the Patent Trial and Appeal Board and the U.S. District Court for the District of New...more

Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Company

Federal Circuit Summaries - Before Newman, Dyk, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: An injury-in-fact is required to establish Article III standing for judicial review of agency action,...more

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