The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more
Limits of Inherent Anticipation in Product-by-Process Claims - In Restem, LLC v. Jadi Cell, LLC, Appeal No. 23-2054, the Federal Circuit held that inherency in product-by-process claims requires the prior art to inevitably...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s determination that 79 challenged composition claims across three related patents were unpatentable but reversed the Board’s...more
Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more
On a second appeal from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) determination that a patent directed to creating a...more
Before Moore, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The mere fact that a certain thing may result from a given set of circumstances is not sufficient to demonstrate inherency. Instead,...more
PATENT CASE OF THE WEEK - PersonalWeb Techs., LLC v. Apple, Inc., Appeal No. 2018-1599 (Fed. Cir. March 8, 2019 - In a second appeal in this inter partes review matter, the Federal Circuit reversed the PTAB’s finding of...more
Among the many differences from a patent litigation in a district court, the expedited nature of an inter partes review (IPR) brings with it an obligation for the petitioner to have a full-fledged legal theory of its case...more
Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more
In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more
Despite an error by the Patent Trial and Appeal Board (PTAB or Board) in relying on inherency to render an obviousness determination, the US Court of Appeals for the Federal Circuit affirmed the PTAB decision, finding...more
In recent decisions, the Federal Circuit has found error in the USPTO Patent Trial and Appeal Board’s approach to obviousness rejections, including its reliance on the doctrine of routine optimization without evidence of an...more
In Honeywell v. Mexichem the Circuit vacates a Board determination of obviousness, ruling that the Board improperly relied on inherency, appeared to shift the burden of nonobviousness to the patentee, and violated the APA by...more
On February 3, 2017, the PTAB denied a petition by Amneal Pharmaceuticals LLC (“Amneal”) to institute an inter partes review of Hospira Inc.’s patent directed to pharmaceutical compositions of the sedative dexmedetomidine...more