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Federal Circuit Confirms Boundaries of Fee Recovery Under 35 USC § 285

In Dragon Intellectual Property LLC v. DISH Network LLC, the US Court of Appeals for the Federal Circuit addressed an “exceptional” set of circumstances concerning the recovery of attorney fees in district court litigation...more

PTAB Digest 2021/2022: The Latest Trends and Developments in Post-Grant Proceedings

The PTAB Digest 2021/2022 provides an overview of PTAB statistics, trends, and updates that impact strategies and business decisions for patent owners and petitioners alike. Significant developments included the...more

Federal Circuit: PTO Director Decisions Vacating Ex Parte Reexamination for Estoppel Subject to Judicial Review

In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more

2020 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

As of 2020, post grant proceedings have been in use for eight years. Designed as an alternative to district court litigation post grant proceedings have offered litigants a faster and more cost effective forum for resolving...more

Federal Circuit: Inherency in an Obviousness Analysis

The US Court of Appeals for the Federal Circuit held that data obtained after an asserted patent’s priority date may be used to demonstrate what is “necessarily present” in a prior art embodiment. Although the district court...more

Federal Circuit: Open Transitional Phrases and Markush Groups in Pharmaceutical Claims

In one of its first precedential opinions of the new year, the US Court of Appeals for the Federal Circuit held that a claim using “comprising” as a transition phrase followed by a limitation requiring a component that...more

Federal Circuit: Finding the Safe Harbor in Drug Development's Choppy Waters

The US Court of Appeals for the Federal Circuit recently upheld the district court’s denial of a judgment as a matter of law (JMOL) or, alternatively, motion for a new trial, reinforcing the fine line that exists between...more

2019 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

As of 2019, post-grant proceedings have been in use for seven years. Designed as an alternative to district court litigation, post-grant proceedings have offered litigants a faster and more cost-effective forum for resolving...more

Federal Circuit: ‘Consisting Essentially of’ Risks Indefiniteness and No Intent from ANDA Label’s Permissive Use

A split Federal Circuit panel recently upheld the district court’s judgment of invalidity and noninfringement because the phrase “consisting essentially of” rendered the asserted claims indefinite and the proposed ANDA label...more

Lawmakers Propose Changes to Framework of Sections 101 on Patent Eligibility and 112(f) on Functional Claiming

Members of the US Senate Judiciary Subcommittee on Intellectual Property and House Intellectual Property Subcommittee recently released a bipartisan, bicameral draft bill to reform patent eligibility under 35 USC § 101 and...more

USPTO Announces Guidance for Subject Matter Eligibility and Computer-Implemented Functional Claim Limitations

The US Patent and Trademark Office (USPTO) on January 4 announced the “2019 Revised Patent Subject Matter Eligibility Guidance” and “Computer-Implemented Functional Claim Limitations Guidance” for examiners and administrative...more

PTAB’s Trial Practice Guide Update: Implications for Parties Moving Forward

The first update to the Patent Trial and Appeal Board Trial Practice Guide includes guidance that will benefit both petitioners and patent owners, from updates regarding expert testimony and motions to exclude and to strike,...more

2018 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Up-to-date and well-informed insights into PTAB proceedings from our Intellectual Property practice’s PTAB Working Group. Significant developments in 2017 include: ..Judicial review of institution decisions was expanded...more

Federal Circuit Reverses Rule 12(b)(6) Dismissal on Section 101 Grounds Due to Factual Allegations

The decision of the US Court of Appeals for the Federal Circuit in Aatrix Software, Inc. v. Green Shades Software, Inc. clarified that although Section 101 of the US Patent Act is ultimately a question of law, it may involve...more

Federal Circuit Gives PTAB Free Hand on Claim Construction

The Federal Circuit recently held that the Patent Trial and Appeal Board is not constrained by parties’ proposed constructions and may, in fact, adopt an alternative construction that the Board raises for the first time at...more

Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more

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