Podcast: PTAB Update: New USPTO Director Brings Significant Changes to PTAB
Is The Deck Stacked Against Patent Owners In The PTAB?
Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more
In the context of Immunex’s patent on IL-4 antibodies, the Federal Circuit says yes. On October 13, 2020, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) final written decision in...more
Affirming an invalidity finding by the Patent and Trial Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found that the claims of the now-expired patent should be construed under the broadest reasonable...more
The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more
On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB)....more
The USPTO has published a final rule, changing the claim construction standard applied during post-grant proceedings (inter partes reviews, post-grant reviews, and covered business methods reviews) before the Office’s Patent...more
Federal Circuit Summary - Before Reyna, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The Board must consider arguments in an IPR petitioner’s reply, where the arguments expressly follow...more
The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more
Federal Circuit Summary - Before Newman, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Claim construction was not reasonable where it extended the breadth of the claims beyond what was...more
Broadest Reasonable Interpretation Encompasses All Embodiments in the Absence of Support Specifically Excluding an Embodiment - In Steuben Foods, Inc. v. Nestle USA, Inc., Appeal No. 2017-1290, the Federal Circuit...more
Distribution Agreements Can Constitute Offers for Sale Under Section 102(b) - In The Medicines Company v. Hospira, Inc., Appeal Nos. 2014-1469, 2014-1504, the Federal Circuit held that a distribution agreement qualified as...more
PATENT CASE OF THE WEEK - Knowles Electronics LLC v. Iancu, Appeal No. 2016-1954 (Fed. Cir. 2018) - In an appeal from an inter partes reexamination, the Federal Circuit affirmed a decision by the PTAB invalidating a...more
Federal Circuit Summaries - Before Moor, Mayer, and Stoll. Appeal from the patent Trial and Appeal Board Summary: The broadest reasonable interpretation of a claim term cannot be so broad that it is inconsistent with...more
Federal Circuit Summaries - Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board Summary: In an inter partes review proceeding, broadest reasonable interpretation of a claim term must encompass...more
In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more
PATENT CASE OF THE WEEK - Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018) - In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to...more
Federal Circuit Summaries - Before Newman, Wallach, and Chen. Appeal from the Patent Trial and Appeal Board Summary: The Federal Circuit upheld the Patent Trial and Appeal Board’s claim construction in an inter partes...more
Federal Circuit Summaries - Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s],...more
For patent owners, the PTAB’s use of the “broadest reasonable interpretation” or “BRI” is often frustrating and sometimes fatal. That appeared to be the case for the patent owner Smith International, Inc., the owner of U.S....more
In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an...more
In Jang v. Boston Scientific, the Circuit takes on the doctrine of ensnarement, affirming a district court’s grant of JMOL based on the patentee’s inability to develop a hypothetical claim that covered the accused stent but...more
The Federal Circuit yesterday issued an opinion in In re: Smith Int’l, Inc., No. 2016-2303 (Fed. Cir. Sept. 26, 2017) reversing an affirmance by the Patent Trial and Appeal Board of the rejection of several claims of U.S....more
District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more
Addressing for the first time the issue of whether the Patent Trial and Appeal Board (PTAB) may rely on an inter partes review (IPR) petitioner’s arguments and adopt its position wholesale, the US Court of Appeals for the...more
In EmeraChem v Volkswagen the Circuit reverses a determination of obviousness because the ?Board did not provide the patentee with an adequate opportunity to address a prior art reference ?that formed a principal basis for...more