Indefiniteness Before the PTAB
The United States Patent and Trademark Office’s (“USPTO”) Appeals Review Panel (“the Panel”) recently clarified that means-plus-function claims do not require that the specification disclose equivalents. See Ex parte...more
On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more
Precedential and Key Federal Circuit Opinions - 1. JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. [OPINION] (2022-1258, 2022-1307, 4/1/2024) (Dyk, Prost, and Hughes) - Prost, J. The Court affirmed...more
On April 1, 2024 the Federal Circuit released its opinion in Janssen Pharmaceuticals, Inc. et al v. Teva Pharmaceuticals USA, Inc. et al., affirming the district court’s finding that certain claims were not indefinite and...more
Defining Indefiniteness: When Are Claim Limitations Contradictory? In Maxell, Ltd., v. Amperex Technology Limited, Appeal No. 23-1194, the Federal Circuit held that two claim limitations are not contradictory if they...more
The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more
In February, the International Trade Commission (ITC) instituted three new Section 337 investigations: Certain Oil Vaporizing Devices, Components Thereof, and Products Containing the Same, 337-TA-1392; Certain Network...more
Earlier today the Federal Circuit in Maxell v. Amperex, No. 23-1194, vacated a District Court’s indefiniteness determination after distinguishing an indefinite patent claim having contradictory claim limitations from a patent...more
To follow up on my February 6, 2024 post, Federal Circuit Judges Prost, Taranto, and Chen heard oral argument on February 9, 2024 in Maxell v. Amperex, No. 23-1194, concerning a claim term that the District Court had found...more
2023 was another busy year for district court decisions! There were patent- and case-dispositive design patent decisions across a range of venues and at a range of case postures, including claim construction rulings, summary...more
This BLOG has written numerous times on issues related to contract formation. See, e.g., [here], [here], [here], [here] and [here]. Briefly stated, “[t]o create a binding contract, there must be a manifestation of mutual...more
18 8 In ABS Global, Inc. v. Cytonome/ST, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023), the Federal Circuit issued a precedential reminder that the use of “a” or “an” means “one or more” in an open-ended claim...more
Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. These are claim elements drafted under 35 U.S.C. § 112(f) (or its predecessor...more
Finjan LLC v. SonicWall, Inc., Appeal No. 2022-1048 (Fed. Cir. Oct. 13, 2023) In the Federal Circuit’s only precedential opinion this week, a majority affirmed summary judgment of non-infringement on appellant Finjan’s...more
Precedential Federal Circuit Opinions - IN RE: FLOAT'N'GRILL LLC [OPINION] (2022-1438, 7/12/2023) (Prost, Linn, and Cunningham) - Linn, J. The Court affirmed the Patent Trial and Appeal Board’s decision “affirming the...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that...more
Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...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
If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this...more
The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more
Case Name: Tris Pharma, Inc. v. Teva Pharms. USA, Inc., Civ. No. 20-5212 (KM)(ESK) (D.N.J. Aug. 16, 2022) (McNulty, J.) Drug Product and Patent(s)-in-Suit: QuilliChew ER® (methylphenidate); U.S. Patents Nos. 9,545,399 (“the...more
Precedential Federal Circuit Opinions - NATURE SIMULATION SYSTEMS INC. v. AUTODESK, INC. [OPINION] (2020-2257, 10/17/2022) (Newman, Lourie, and Dyk) - Newman, J. The Court reversed a district court judgment that the...more
Earlier this year, the US Court of Appeals for the Federal Circuit reversed a district court decision for relying on an incorrect standard for indefiniteness. (Nature Simulation Systems Inc. v. Autodesk, Inc). Now, in...more
International Business Machines Corp. v. Zillow Group, Inc. et al., Appeal No. 2021-2350 (Fed. Cir. 2022) - In this week’s Case of the Week, the Federal Circuit affirmed a Rule 12(c) judgment on the pleadings that IBM’s...more