News & Analysis as of

Anticipation

Sheppard Mullin Richter & Hampton LLP

Deletions Matter: The Federal Circuit Rejects Importing Language from Provisional and Related Patent into FMC’s Asserted Claims

This case addresses two primary issues (i) whether the district court erred in construing the claim term “composition” in FMC’s pesticide patents to mean only “stable compositions,” based on disclosures found in a provisional...more

Morgan Lewis

Federal Circuit Addresses Reviewability of Petition Scope, Affirms PTAB Treatment of Prior Art

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The Federal Circuit’s IBM v. Zillow decision (Appeal No. 24-1170) clarifies the scope of Section 314(d)’s bar to reviewing institution decisions and reaffirms that patent owners may still challenge final written decisions...more

Wilson Sonsini Goodrich & Rosati

Continued Scrutiny of Genus Claims: The Written Description and Enablement Requirements for Broad and Previously Undisclosed...

Consistent with standing precedents, the U.S. Court of Appeals for the Federal Circuit (the court) invalidated Seagen’s US10,808,039 patent (the ’039 patent) claims directed to antibody-drug conjugates (ADCs) comprising a...more

McDermott Will & Schulte

Authentication approved: § 314(d) doesn’t bar review of IPR petition scope

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board inter partes review (IPR) decision, finding that: § 314(d) does not bar review of an IPR petition’s scope....more

A&O Shearman

Federal Circuit Rejects Estoppel And Expired Patent Arguments And Affirms Finding of Anticipation

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The United States Court of Appeals for the Federal Circuit reviewed an appeal from the Patent Trial and Appeal Board’s decision in an ex parte reexamination of U.S. Patent No. 7,933,431, owned by Gesture Technology Partners,...more

McDermott Will & Schulte

IPR estoppel doesn’t extend to ongoing ex parte reexamination

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The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte...more

Alston & Bird

Patent Case Summaries | Week Ending September 26, 2025

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Bayer Pharma Aktiengesellschaft v. Mylan Pharmaceuticals Inc., et al., No. 2023-2434 (Fed. Cir. (PTAB) Sept. 23, 2025). Opinion by Moore, joined by Cunningham and Scarsi (sitting by designation)....more

McDermott Will & Schulte

Functional relationship recitation can’t overcome anticipating prior art

Underscoring functional relationships as limitations in patent claims and the importance of claim construction, the US Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded a Patent Trial &...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Vacates PTAB's Findings on Anticipation and Obviousness and Declines to Make First Instance...

In this edition of The Precedent, we outline the decision in Sierra Wireless v. Sisvel S.p.A. The Federal Circuit addressed an appeal from the USPTO Patent Trial and Appeal Board’s (the “PTAB” or the “Board”) final written...more

A&O Shearman

Federal Circuit Affirms Patent Invalidity, Emphasizes Need For Substantive Expert Testimony

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On August 19, 2025, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the U.S. District Court for the Eastern District of Louisiana’s grant of summary judgment that claims of Wilco Marsh Buggies &...more

Lathrop GPM

Federal Circuit Decision Highlights the Risks of Inconsistency from Provisional to Patent

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In an August 1, 2025, precedential ruling (FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025)), the U.S. Court of Appeals for the Federal Circuit vacated a temporary restraining order granted by the U.S....more

McDonnell Boehnen Hulbert & Berghoff LLP

American Science and Engineering, Inc. v. Stewart (Fed. Cir. 2025)

Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial...more

Alston & Bird

Patent Case Summaries | Week Ending August 1, 2025

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Jiaxing Super Lighting Electric Appliance, Co., Ltd., et al. v. CH Lighting Technology Co., Ltd., et al., No. 2023-1715 (Fed. Cir. (W.D. Tex.) July 28, 2025). Opinion by Dyk, joined by Chen and Hughes....more

McDermott Will & Schulte

Dim damages methods can doom bright ideas

In a mixed ruling on evidentiary exclusions and damages methodology, the US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a district court’s decision that excluded...more

Venable LLP

Federal Circuit Affirms PTAB’s Unpatentability Findings in Gene Therapy Hemgenix® IPRs

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On May 22, 2025, the CAFC affirmed the PTAB’s (Board) Final Written Decisions in Pfizer’s IPR2021-00925 and IPR2021-00926 finding all challenged claims of uniQure’s U.S. Patent No. 9,982,248 (“the ’248 patent”) unpatentable...more

Jones Day

Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

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Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Anticipation Analysis for Product-By-Process Claims

In Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. Mar. 13, 2025), the Federal Circuit upheld the Patent Trial and Appeal Board’s decision holding that U.S. Patent No. 9,803,176 (“the ’176 patent”) was not inherently...more

McDermott Will & Schulte

Validity Analysis for Product-by-Process Claim Focuses on Product

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability finding, explaining that an anticipation analysis for a product-by-process claim focuses on the product and not the process....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Design Patents Year in Review: Analysis & Trends - Design Patents at the PTAB: 2024 in Review

Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v....more

McDermott Will & Schulte

New Arguments Yield Same Unpatentability Outcome

On remand from the US Court of Appeals for the Federal Circuit in connection with inter partes review (IPR) proceedings, the Patent Trial & Appeal Board considered the petitioner’s reply arguments and evidence regarding the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

Lighthouse

Four Traits of an Innovative eDiscovery Project Manager for Law Firms

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Law firms support a variety of clients with a wide-ranging suite of matters, making it increasingly difficult to roll out a “one size fits all” project management solution. Law firms with their own mature Discovery practice...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 Design Patents Year in Review: Analysis & Trends: PTAB: Design Patents for GUI Interface Cancelled in AIA Proceedings

All three of the challenges that the Patent Trial and Appeal Board (PTAB) instituted in 2022 resulted in a final written decision canceling the challenged patent. Two of the three final written decisions rendered in 2023 are...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): A Trio of Claim Construction Cases

This year we are covering three claim construction cases from the Federal Circuit—one coming from the Board and the two from district court. Taken together, the cases are a good reminder of the high burden that a party must...more

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