News & Analysis as of

Inter Partes Review (IPR) Proceeding Doctrine of Prosecution Disclaimer

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Jones Day

District Courts Find PTAB Statements Constitute Disclaimer

Jones Day on

In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more

Knobbe Martens

Arendi S.A.R.L. v. Google LLC

Knobbe Martens on

Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more

Foley & Lardner LLP

Federal Circuit: Effect of Disclaimer Prior to Trial Institution

Foley & Lardner LLP on

In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter...more

Knobbe Martens

Post-Institution Disclaimer Insufficient to Avoid CBM Review

Knobbe Martens on

The PTAB has determined that a patent owner may not moot a CBM proceeding by disclaiming claims post-institution. Emerson Electric Co. v. SIPCO, LLC, CBM2016-00095, Paper 39 (P.T.A.B. Jan. 16, 2018)....more

Knobbe Martens

Arthrex, Inc. v. Smith & Nephew, Inc.

Knobbe Martens on

Federal Circuit Summaries - Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB may enter an adverse judgment against a patent owner where, before issuing an institution...more

Knobbe Martens

Federal Circuit Review - June 2017

Knobbe Martens on

Inter Partes Reexamination Estoppel Attaches On Claim-by-Claim Basis for New Requests and Pending Proceedings - In In re Affinity Labs Of Texas, LLC, Appeal Nos. 2016-1092, 2016-1172, the Federal Circuit held that the...more

McDermott Will & Emery

Patent Owner Statements in IPR May Result in Prosecution Disclaimer

Addressing for the first time the issue of whether statements made during America Invents Act post-grant proceedings can trigger a prosecution disclaimer, the US Court of Appeals for the Federal Circuit upheld the district...more

Knobbe Martens

Statements Made in an IPR Can Lead to Prosecution Disclaimer

Knobbe Martens on

The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings. The Court explained...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

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