The US Court of Appeals for the Federal Circuit affirmed a district court judgment of noninfringement, finding that deleting a portion of a definition between a provisional application and a nonprovisional application was...more
Precedential and Key Federal Circuit Opinions - PROMPTU SYSTEMS CORPORATION v. COMCAST CABLE COMMUNICATIONS, LLC [OPINION] (2022-1093, 2/16/2024) (Moore, Prost, and Taranto) - Per Curiam. The Court sua sponte issued...more
A claim is said to be anticipated when a single prior art reference discloses, either expressly or inherently, each and every limitation of the claim. But what happens when a prior art reference discloses some aspects of the...more
"This application claims priority to [properly identified earlier-filed application, the disclosure of which is expressly incorporated herein in its entirety" is a phrase commonly found in patents and patent applications as...more
Case Name: Pharmacyclics LLC v. Alvogen, Inc., No. 2021-2270, 2022 WL 16943006 (Fed. Cir. Nov. 15, 2022) (Circuit Judges Chen, Bryson, and Hughes presiding; Opinion by Bryson, J.) (Appeal from D. Del., Connolly, J.)...more
Finjan LLC v. ESET, LLC, Appeal No. 2021-2093 (Fed. Cir. 2022). The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated...more
It is often questioned how someone’s career path, which began with asserting and defending patents in litigation, transforms to a career focused on cybersecurity and data privacy, as mine has in the last two decades of...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to...more
Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more
In Droplets, Inc. v. E*Trade Bank, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that Droplet’s patent was not entitled to the priority date of a provisional application because...more
Addressing the issues of priority and incorporation by reference, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s) prior art rejection of a patent based on the priority date...more
Federal Circuit Summaries - Before Dyk, O’Malley, and Wallach. Appeal from the PTAB. Summary: A priority claim must be explicitly stated in the patent and cannot be incorporated by reference from an earlier patent. ...more
PATENT CASE OF THE WEEK - Droplets, Inc. v. E*TRADE Bank., Appeal No. 2016-2504 (Fed. Cir. 2018)?- In an appeal from an inter partes review, the Federal Circuit affirmed a decision by the PTAB invalidating a patent...more
The US Court of Appeals for the Federal Circuit partially vacated a ruling by the Patent Trial and Appeal Board (PTAB), concluding that an incorporation by reference clause in an earlier application in the line that led to...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
In an appeal from final written decisions of the Patent Trial and Appeal Board (“Board”) in six inter partes review (IPR) proceedings where Ford Motor Co. (“Ford”) challenged two patents owned by Paice LLC (“Paice”), the...more
Resolving what was primarily a broadest reasonable interpretation (BRI) claim construction issue, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision that invalidated claims...more
T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC - Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office’s Patent Trial...more