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Intellectual Property Litigation Patent Invalidity Prior Art

Jones Day

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

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Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sage Products, LLC v. Stewart (Fed. Cir. 2025)

When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Recentive Analytics, Inc., v. Fox Corp.

Recentive Analytics, Inc., v. Fox Corp., Appeal No. 2023-2437 (Fed. Cir. Apr. 18, 2025) In our Case of the Week, the Federal Circuit addressed a question of first impression concerning whether developments in machine...more

Jones Day

Expert Testimony Supporting POPR Can Be An Effective Strategy

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It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more

Venable LLP

Spotlight On: Lantus® / Lantus® SoloSTAR® (insulin glargine recombinant) / Basaglar® (insulin glargine) / Semglee® (insulin...

Venable LLP on

Insulin Glargine Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

BakerHostetler

[Podcast] The Changing Landscape: Admissibility of Experts in Patent Cases

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Experts play a crucial role in patent cases. Experts opine on claim construction, infringement, invalidity and the proper amount of damages. And the exclusion of an expert witness can significantly impact the outcome of a...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Product-by-Process Analysis: Invalidity ≠ Infringement

On March 4, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision in Restem, LLC v. Jadi Cell, LLC, No. 23-2054, 2025 WL 679195, at *1 (Fed. Cir. Mar. 4, 2025), finding that the patent...more

Jones Day

Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

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Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation

Baker Botts L.L.P. on

This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Provides Further Clarity on Issues Surrounding Patent Validity in Novartis Pharmaceuticals Corp. v....

In this edition of The Precedent, we outline the validity of a pharmaceutical patent concerning the patent’s written description. Following an appeal from the United States District Court for the District of Delaware, the...more

Haug Partners LLP

Federal Circuit Addresses Two Key Requirements of On-Sale Bar of Pre-AIA Section 102(b)

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The Federal Circuit’s recent precedential decision in Crown Packaging Technology Inc. v. Belvac Production Machinery, Inc. is noteworthy because it discusses two key requirements of the on-sale bar prong of pre-AIA section...more

Baker Botts L.L.P.

35 U.S.C. § 112 in IPR: I know you cannot use it to invalidate a claim, but how about breaking the priority chain?

Baker Botts L.L.P. on

It is well established that “a petitioner in an inter partes review … is not permitted to assert a ground of unpatentability under 35 U.S.C. § 112.” Dexcowin Golabl, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7,...more

Fish & Richardson

Texas Round-Up: December 2024

Fish & Richardson on

Three subjects stood out in patent litigation in Texas in December 2024: (1) knowledge of related patents, general patent portfolio, or other asserted patents do not establish the knowledge requirement for pre-suit indirect...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Federal Circuit Reverses PTAB’s holding of Non-Obviousness of Standard Adopted 3G Technology

The recent decision by the Federal Circuit in Honeywell International Inc. v. 3G Licensing, S.A., issued on January 2, 2025, overturned the Patent Trial and Appeal Board’s (“the Board”) factual and legal holdings in the final...more

Jones Day

Prior Art Asserted in Second Petition Should Have Been Asserted in the First

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The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more

Alston & Bird

Patent Case Summaries | Week Ending January 3, 2025

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Honeywell International Inc., et al. v. 3G Licensing, S.A., Nos. 2023-1354, -1384, -1407 (Fed. Cir. (PTAB) Jan. 2, 2025). Opinion by Dyk, joined by Chen. Dissenting opinion by Stoll....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] 2022 PTAB Year in Review: Analysis and Trends - February 28th, 1:00 pm - 2:00 pm EST

Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions - February 2nd, 1:00 pm - 2:00 pm EST

In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

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