Here, Hunting Titan petitioned for IPR of DynaEnergetics’ ’422 patent, asserting that the patent was anticipated in light of the Schacherer reference. The Board instituted the IPR and found all original claims unpatentable as...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
The Federal Circuit in AMC Multi-Cinema, Inc. v. Fall Line Patents (Fed. Circ. September 30, 2021, op. 21-1051) held that the PTAB partially abused its discretion when upholding one claim of U.S. Patent No. 9,454,748 for...more
Precedential Federal Circuit Opinions IN RE: JUNIPER NETWORKS, INC. [OPINION] (2021-160, September 2, 2021) (Lourie, Bryson, and Taranto) - Per curiam. Issuing writ of mandamus directing the United States District Court...more
Earlier this month, the Patent Trial and Appeal Board granted a request for rehearing in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), thereby instituting...more
The Federal Circuit has taken the occasion, in appeals from the Patent Trial and Appeal Board as well as district courts, to remand judgments whenever the Court believes that the record below is devoid of sufficient detail to...more
PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more
Addressing whether the Patent Trial and Appeal Board (PTAB or Board) too narrowly read its rules limiting reply briefs in an inter partes review (IPR) to preclude a petitioner’s argument as a “new theory of unpatentability,”...more
Honeywell owns U.S. Patent 9,157,017, which claims automotive air-conditioning systems. The application to the ’017 patent had originally described and recited claims for flouroalkane compounds for use in refrigeration...more
The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more
In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more
PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more
Gust, Inc. v. AlphaCap Ventures, LLC, Appeal No. 2017-2414 (Fed. Cir. Sept. 28, 2018) In an appeal from a district court decision awarding fees pursuant to 28 U.S.C. § 1927, the Federal Circuit reversed. The decision makes...more
Federal Circuit Summaries - Before Newman, Mayer, and Stoll. Appeal from the U.S. District Court for the Northern District of Ohio. Summary: While there is not a “practicing the prior art” defense to literal...more
In AdjustaCam v. Newegg, the Circuit reverses the denial of attorney fees where Judge Gilstrap simply adopted a pre-Octane Fitness determination by a prior judge, despite the Circuit’s post-Octane Fitness remand of the case...more
Addressing the requirement to disclose the real parties-in-interest (RPI) for an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s request for rehearing regarding the...more
Addressing its decision to institute a covered business method (CBM) patent review based on a second petition, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) found that its decision...more