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Inter Partes Review (IPR) Proceeding CAFC Patent Infringement

Venable LLP

Regeneron and Biocon Settle Litigation over EYLEA® Biosimilar Yesafili™

Venable LLP on

On April 15, 2025, Biocon announced it reached a settlement agreement with Regeneron, dismissing CAFC Appeal No. 24-2002 and Case No. 1:22-cv-00061 (N.D.W. Va.) / MDL 1:24-md-03103 (N.D.W. Va.) and allowing the...more

McDermott Will & Emery

The Clear and Unmistakable Standard for Applying Prosecution Disclaimer

The US Court of Appeals for the Federal Circuit found that a district court misconstrued claim terms based on a misapplication of the clear and unequivocal disavowal standard and vacated its noninfringement decision. Maquet...more

A&O Shearman

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

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

Irwin IP LLP on

Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...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

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

Jones Day on

Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Jones Day

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

Jones Day on

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

WilmerHale

CAFC Patent Cases - April 2021

WilmerHale on

Precedential Federal Circuit Opinions - ..WI-LAN INC. v. SHARP ELECTRONICS CORPORATION [OPINION]  (2020-1041, April 6, 2021) (DYK, TARANTO, and STOLL) - Dyk, J.  Affirming related district court judgments holding...more

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

ABS Global v. Cytonome/St, LLC: Mootness and Preserving the Argument for Vacatur

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017,...more

Foley & Lardner LLP

CBM Review: A Postmortem

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Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak...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 Finds Another PTAB Claim Construction Unreasonable and Again Reverses an Invalidity Holding

Troutman Pepper Locke on

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

Troutman Pepper

Estoppel Does Not Attach When Petitioner’s Grounds Are Denied As Redundant

Troutman Pepper on

Under 35 U.S.C. 315(e)(1), a petitioner in an inter partes review of a claim in a patent that has resulted in a final written decision by the Board may not request or maintain a proceeding before the Patent Office with...more

Sheppard Mullin Richter & Hampton LLP

Court of Appeals for the Federal Circuit Sides With PTAB in Inter Partes Review Appeal

In a decision imparting more certainty to the Post Grant Review process, the Court of Appeals for the Federal Circuit (the “CAFC”) held that it lacks jurisdiction to review the Patent and Trademark Office’s (the “PTO’s”)...more

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