News & Analysis as of

Inter Partes Review (IPR) Proceeding CAFC Intellectual Property Protection

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

2024 Design Patents Year in Review: Analysis & Trends

As we predicted in our 2023 report, 2024 was a banner year for design rights in the U.S. and elsewhere. In last year’s report, we noted that the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed to consider en banc...more

A&O Shearman

Standing & Product Development: Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Irwin IP LLP

CAFC Holds Priority Favors True Trailblazers, Not Maze-Like Paths Through a Forest of Prior Applications: Regents of the...

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The Court of Appeals for the Federal Circuit (“CAFC”) recently upheld a decision of the Patent Trial and Appeal Board (“PTAB”) that found some claims of U.S. Patent 8,815,830 (“the ’830 patent”) unpatentable as anticipated....more

Jones Day

Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row

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The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more

Mintz - Intellectual Property Viewpoints

Relying on Outside Prior Art in an IPR – Not so fast!

The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds...more

Troutman Pepper Locke

CAFC Reverses PTAB On §315(b) Petition Time Bar Interpretation

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Section 315(b) of the America Invents Act (AIA) provides that an inter partes review (IPR) proceeding “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the...more

Troutman Pepper Locke

CAFC Affirms PTAB’s Decision That Printed Matter Doctrine Can Be Used In Claim Construction

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In an inter partes review proceeding, a challenger cannot raise patent-eligibility as a ground of invalidity. Rather, the invalidity grounds are limited to lack of novelty and obviousness. ...more

Troutman Pepper Locke

CAFC Affirms PTAB’s Decision To Invalidate Cialis and Adcirca Patents

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In a recent decision, the Court of Appeals for the Federal Circuit (CAFC) affirmed decisions in two inter-partes review (IPR) proceedings that patents owned by ICOS Corporation directed to tadalafil formulations (used in the...more

A&O Shearman

Intellectual Property Newsletter - January 2018

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Shearman & Sterling’s IP litigation team has published its latest newsletter. The newsletter addresses a number of current IP topics, ranging from the constitutionality and judicial reviewability of inter partes review to...more

Troutman Pepper Locke

CAFC Finds Another PTAB Claim Construction Unreasonable and Again Reverses an Invalidity Holding

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In an inter partes review (IPR) proceeding, the meaning of terms used in challenged claims of an unexpired patent are given their broadest reasonable interpretation in light of the claim language and the specification. The...more

Troutman Pepper Locke

AIA On-Sale Bar Applies to Publicized Sales, Even When Knowledge of Sale Did Not Disclose the Underlying Invention

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The Court of Appeals for the Federal Circuit (CAFC) recently construed the on-sale bar provision of 35 U.S.C. 102(a) in a way that will make it easier for petitioners to challenge third party patents. While in an inter-partes...more

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