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Expert Testimony Patents Claim Construction

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

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SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

Jones Day

Expert Testimony Supporting POPR Can Be An Effective Strategy

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It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more

Proskauer - The Patent Playbook

Federal Circuit Affirms That Expert Testimony Must Be Based on Competent and Reliable Evidence

Mirror Worlds Technologies, LLC (“Mirror Worlds”) sued Meta Platforms, Inc. (“Meta”)—formerly Facebook, Inc.—in the Southern District of New York for patent infringement. The lawsuit involved three patents related to storing,...more

McDermott Will & Emery

Construing Unambiguous Claim Language and Qualifying Challenged Expert as POSITA

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Addressing the issues of claim construction and the requisite expert qualifications to testify on obviousness and anticipation, the US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board decision...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: The Federal Circuit Remands and Reassigns District Court Patent Infringement Case to a New Judge

In this edition of The Precedent, we outline the decision in Trudell Medical International Inc. v. D R Burton Healthcare LLC. The U.S. Court of Appeals for the Federal Circuit recently affirmed in part, reversed in part and...more

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

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

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

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...more

Irwin IP LLP

Federal Circuit Opts Not to Play its REVERSE [DOE] Card 

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Steuben Foods, Inc. v. Shibuya Hoppmann Corp., No. 23-1790 (Fed. Cir. 2025) - On January 24, 2025, the Federal Circuit considered the “long mentioned but rarely applied” reverse doctrine of equivalents (“RDOE”) defense. ...more

McDermott Will & Emery

Bottling the Truth: Equivalence and Reverse Equivalence

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The US Court of Appeals for the Federal Circuit ruled that the “substantially the same way” comparison in connection with a doctrine of equivalents (DOE) analysis involving a means-plus-function claim limitation should focus...more

Akin Gump Strauss Hauer & Feld LLP

Voluminous Expert Testimony and Exhibits Insufficient on Their Own to Warrant Denial of IPR Institution

The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more

Hudnell Law Group

Federal Circuit Weighs the Need for Claim Construction at the Rule 12 Stage

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On October 18, 2024, the Federal Circuit issued its opinion in UTTO Inc. v. Metrotech Corp., No. 2023-1435, 2024 U.S. App. LEXIS 26340, (Fed. Cir. Oct. 18, 2024) addressing the propriety of conducting claim construction at...more

McDermott Will & Emery

Equivalence Requires Element-by-Element Proof With Linking Argument

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The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

BakerHostetler

Patent Experts: No Ordinary Skill in the Art at the Time of Invention? No Problem!

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The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent....more

Knobbe Martens

Federal Circuit Review - October 2023

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Substantial Evidence in Determining Obviousness - In Schwendimann v. Neenah, Inc, Appeal No. 22-1335, the Federal Circuit held that the PTAB’s finding on obviousness is supported by substantial evidence that a skilled...more

McDermott Will & Emery

No Money, Mo’ Problems: Speculative Damages Award Cannot Stand

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The US Court of Appeals for the Federal Circuit upheld a district court’s claim construction and jury instructions but reversed a premature judgment as a matter of law (JMOL) on obviousness and an imprecise damages award....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023 #3

Cyntec Company, Ltd. v. Chilisin Electronics Corp., Appeal No. 2022-1873 (Fed. Cir. Oct. 16, 2023) In this week’s Case of the Week, the Federal Circuit reversed and remanded a California district court’s judgment as a...more

McCarter & English, LLP

Patent Office Cancels Patents for Inadequate Voluntary Disclosure in IPRs

Inter partes reviews (IPRs) are litigation-like procedures held before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that are used to challenge the validity of patents. Typically,...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Kyocera Senco Indus. Tools v. Int’l Trade Comm’n,...

The patent holder, Kyocera, filed a complaint in the International Trade Commission against Koki in Certain Gas Spring Nailer Prods. & Components Thereof, Inv. No. 337-TA-1082, 2020 WL 2093834 (Apr. 28, 2020). Kyocera’s...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Looks to Expert Testimony to Construe Patent with Ambiguous Intrinsic Record

On December 15, in Uniloc 2017 LLC v. Netflix, Inc. (nonprecedential), the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) determination that a claim of Uniloc’s U.S. 6,584,229 patent was unpatentable as...more

McDermott Will & Emery

Bad Connection: Claim Construction Argument without Explanation Given No Weight

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed...more

Haug Partners LLP

Treehouse Avatar LLC v. Valve Corp.: District Court Did Not Abuse Its Discretion in Striking Expert Testimony That Failed to Rely...

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I. Introduction - In Treehouse Avatar LLC v. Valve Corp., the Federal Circuit affirmed the Western District of Washington’s decisions to (i) strike portions of an expert report that failed to apply the parties agreed upon...more

McDermott Will & Emery

Game Over when Expert Fails to Use Correct Claim Construction

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The US Court of Appeals for the Federal Circuit concluded that a district court did not abuse its discretion in striking expert testimony where the testimony did not rely on an agreed and court-adopted claim construction....more

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