Indefiniteness Before the PTAB
2024 was another busy year for district court decisions! There were multiple jury trials, case-dispositive design patent decisions, and claim construction decisions across a range of venues and at a range of case postures. We...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
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
Referencing the use of antecedents from a “wherein” clause, the US Court of Appeals for the Federal Circuit reversed a district court’s claim construction and vacated its summary judgment ruling of indefiniteness that relied...more
Precedential Federal Circuit Opinions KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. [OPINION] (2021-1638, 10/7/21) (Newman, Prost, Chen) - Chen, J. Denying motion for preliminary injunction. Patentee sought to compel...more
Traxcell Techs., LLC v. Sprint Commn’s Co. et al Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. Summary: A patentee’s extensive citations to evidence failed to avoid summary judgment of...more
In an opinion issued November 19, 2018, Judge Chesler of the U.S. District Court for the District of New Jersey found two Orange Book-listed patents for VIMOVO® invalid for indefiniteness in the way certain pharmacokinetic...more
In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...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
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
Federal Circuit Holds That Using A Contract Manufacturer Does Not Trigger An On-Sale Bar - In The Medicines Co. v. Hospira, Inc., Appeal Nos. 2014-1469, -1504, the Federal Circuit, en banc, held that the patentee’s deal...more
In an opinion addressing claim construction, infringement and indefiniteness, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s findings that the asserted claims were not indefinite and not...more
Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more
Andrews, J. Defendant Micron’s motion for summary judgment of non-infringement is granted in part and denied in part; for invalidity is denied; for no indirect infringement is granted in part and denied in part. Plaintiffs’...more
Addressing the issues of indefiniteness and non-infringement for both utility and design patents, the U.S. Court of Appeals for the Federal Circuit reversed and vacated in part the district court’s grant of summary judgment...more
It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would...more