Indefiniteness Before the PTAB
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
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
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
Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more
Rain Computing, Inc. v. Samsung Electronics America, Inc., Appeal Nos. 2020-1646, -1656 (Fed. Cir. Mar. 2, 2021) - Our Case of the Week focuses on the issue of indefiniteness, and particularly, terms that are construed as...more
SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the Northern District of California. Summary: A claim construed to require hardware does not...more
On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent...more
On September 15, 2020, the U.S. Court of Appeals for the Federal Circuit, in IQASR v. Wendt, found that a district court did not err in its scrutiny of the extrinsic and intrinsic evidence presented to find U.S. Patent No....more
In IBSA Institut Biochimique v. Teva Pharmaceuticals USA, Inc. a valuable lesson was learned about relying on a translation of a non-English patent application. The IBSA Institut Biochimique (IBSAIB) hired an Italian patent...more
PTAB May Not Cancel Claims on the Grounds of Indefiniteness in an IPR Proceeding - In Samsung Electronics America v. Prisua Engineering Corp., Appeal No. 19-1169, the Federal Circuit held that the Patent Trial and Appeal...more
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more
The Federal Circuit definitively rejected arguments to cancel challenged claims for reasons other than anticipation or obviousness in an inter partes review proceeding. In Samsung Electronics America, Inc., v. Prisua...more
The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the...more
SAMSUNG ELECTRONICS AMERICA v. PRISUA ENGINEERING CORP. Before Prost, Newman, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: The Patent Trial and Appeal Board (“PTAB”) may not cancel claims on the...more
In its recent decision, Fiber, LLC. v. Ciena Corp., No. 2019-1005 (Fed. Cir. Nov. 21, 2019), the Court of Appeals for the Federal Circuit (Federal Circuit) issued a reminder that the structure necessary to satisfy the...more
The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more
The legal meaning of the transition language “consisting essentially of” is well-established in Federal Circuit case law and is generally construed to mean that the composition or formulation (a) necessarily includes the...more
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
Video game patents being asserted in litigation are frequently challenged by defendants at the Patent Trial and Appeals Board by filing a petition requesting inter partes review (IPR), post-grant review (PGR), or (less...more
The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more
Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more
Federal Circuit Summary - Before Prost, Bryson, and O’Malley. Appeal from the United States International Trade Commission (“ITC”). Summary: Evidence intrinsic to a patent may be sufficient to overcome the presumption...more
Functional Claiming in Software Patents - Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm. Because algorithms are...more
The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more
...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more