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Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order

Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Filing an amended complaint does not nullify a dismissal order that was not later...more

En Banc Federal Circuit Adopts a New Test for Design Patent Obviousness

Before Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board....more

IPR Petitioners Must Be Permitted to Respond to Claim Constructions First Proposed in Patent Owner Response

AXONICS, INC. v. MEDTRONIC, INC. Before Dyk, Lourie, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Where a patent owner in an IPR proposes a claim construction for the first time in a patent...more

A “Known Technique” for Showing a Motivation to Combine References

INTEL CORP. V. PACT XPP SCHWEIZ AG - Before Newman, Prost, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Under the “known-techniques” rationale, a motivation to combine two prior art references...more

Judicial Review Is Available for PTO Director’s Fintiv Rulemaking Procedure

APPLE INC. v. VIDAL - Before Lourie, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of California. Summary: Judicial review is available to determine whether the PTO...more

Identical Elements Are Not Required for the Presumption of Obviousness Based on Overlapping Ranges

ALMIRALL, LLC v. AMNEAL PHARMACEUTICALS LLC - Before Lourie, Chen, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: Presumption of obviousness based on overlapping ranges applied where a...more

Authentication of Prior Art in an IPR Does Not Require Testimony

VALVE CORPORATION v. IRONBURG INVENTIONS LTD. Before Newman, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: For purposes of authenticating a prior art reference in IPR proceedings, the Board...more

Licensee Lacks Standing to Appeal an Adverse IPR Decision Based On Royalty Payments for a Patent Portfolio and a Speculative...

APPLE, INC. v. QUALCOMM, INC. Before Moore, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents it licenses from Qualcomm, despite...more

Concrete Plans Establish Standing for IPR Appeals

GENERAL ELECTRIC COMPANY v. RAYTHEON TECHNOLOGIES CORP. Before Lourie, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A party has standing to appeal an adverse IPR decision if it has concrete...more

Eligibility for CBM Review Is Not Appealable

SIPCO, LLC v. EMERSON ELECTRIC CO. Before O’Malley, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The Board’s determination that a patent qualifies for CBM review is non-appealable under 35...more

Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds

NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY, HEWLETT PACKARD ENTERPRISE COMPANY - Before Prost, Newman, and Bryson. Appeal from the United States District Court for the Eastern District of Texas. Summary: A...more

Patent Owner Arguments Do Not Limit the Scope of the Issues the Board May Address in Its Final Written Decision

FANDUEL, INC. v. INTERACTIVE GAMES LLC - Before Dyk, Moore, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: The Board does not violate the Administrative Procedure Act (APA) if it institutes trial...more

IPR Real-Parties-In-Interest Determination Is Final and Non-Appealable

ESIP SERIES 2, LLC V. PUZHEN LIFE USA, LLC - Before Reyna, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB’s determination that an IPR petition identifies all real parties in...more

Standing to Appeal an Adverse IPR Decision Requires an Injury

ARGENTUM PHARM. LLC v. NOVARTIS PHARM. CORP. Before Lourie, Moore, and Reyna. Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Summary: A party lacks standing to appeal an adverse IPR...more

Time-bar Challenges to IPR under Section 315(b) Can Be Waived

Time-bar Challenges to IPR under Section 315(b) Can Be Waived - ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NOS. 2019-1059 & 2019-1060) - ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NO....more

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