News & Analysis as of

Inter Partes Review (IPR) Proceeding Evidence Claim Construction

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

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

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

2021 PTAB Year in Review: Analysis & Trends: Evidentiary Issues When Leveraging the Records in Parallel Proceedings Involving the...

Parallel proceedings before the USPTO Patent Trial and Appeal Board (PTAB) are a common feature of district court litigation, and it is common for the factual records to overlap between these tribunals. As a result, questions...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

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 patent litigation. In its first...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.

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

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

PTAB Strategies and Insights - August 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more

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

PTAB Strategies and Insights - April 2021

[co-author: Yuke Wang, Patent Agent] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2019 #4

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-1584 (Fed. Cir. Aug. 21, 2019) - In this week’s Case of the Week, the Federal Circuit affirmed an inter partes review decision of the Patent Trial and Appeal Board,...more

Jones Day

No Basis For Broad Exclusion Of Inventor Testimony

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The Board has broad discretion to determine how much weight should be given to inventor testimony, but as long as the testimony does not relate to the inventor’s opinion about the meaning of a claim term, there is no basis...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019 #2

PATENT CASE OF THE WEEK - Omega Patents, LLC v. CalAmp Corp., Appeal No. 2018-1309 (Fed. Cir. Apr. 8, 2019)- In an appeal from a series of post-trial decisions, the Federal Circuit provided several important opinions. The...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

Fenwick & West LLP on

In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

Jones Day

No Genuine Issue of Fact Where Petitioner’s Claim Construction Is Wrong

Jones Day on

The PTAB’s recent decision denying rehearing in United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 (PTAB May 22, 2018) sheds light on the Board’s practice under 37 C.F.R. 42.108(c),...more

Knobbe Martens

Federal Circuit Review - April 2018

Knobbe Martens on

Broadest Reasonable Interpretation Encompasses All Embodiments in the Absence of Support Specifically Excluding an Embodiment - In Steuben Foods, Inc. v. Nestle USA, Inc., Appeal No. 2017-1290, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - In re Power Integrations, Inc., Appeal No. 17-1304 (Fed. Cir. 2018) - In In re: Power Integrations, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) rejection of a...more

Mintz - Intellectual Property Viewpoints

Establishing Obviousness: A Fundamental Case of Evidence Over Arguments

The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious. In doing so, the Federal...more

Knobbe Martens

Polaris Industries, Inc. v. Arctic Cat, Inc.

Knobbe Martens on

Federal Circuit Summaries - Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s],...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

Knobbe Martens

Federal Circuit Review | January 2017

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PTAB’s Final Written Decision in IPR Must Explain Its Basis for a Motivation to Combine References - In In Re: Nuvasive, Inc., Appeal No. 2015-1670, the Federal Circuit vacated the PTAB’s obviousness finding in an IPR,...more

Knobbe Martens

Federal Circuit Review | September 2016

Knobbe Martens on

Claims Directed to Monitoring and Analyzing Data Held to Be Invalid under § 101 - In Electric Power Group, LLC v. Alstom S.A., Appeal No. 2015-1778, the Federal Circuit upheld the district court’s grant of summary...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical Inc. (Fed. Cir. 2016)

The Federal Circuit affirmed the decision by the Patent Trial and Appeals Board (PTAB) in an inter partes review (IPR) that the claims of Genzyme's U.S Patent Nos. 7,351,410 and 7,655,226 were obvious, in Genzyme Therapeutic...more

McDermott Will & Emery

PTAB Grants Late Motion to Amend, But Amended Claims Fail to Breathe Life into Patent

Addressing the standards for a motion to amend claims during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) granted a motion to amend the claims in an IPR, but ultimately denied...more

Kilpatrick Townsend & Stockton LLP

Federal Circuit Remands IPRs to PTAB for Reference Consideration

The non-invasive prenatal testing field has been an active area for patent challenges. Ariosa has challenged patents held by competitors Sequenom and Verinata. The latter is patent owner in two IPR proceedings challenging...more

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