News & Analysis as of

Inter Partes Review (IPR) Proceeding Mootness Patent Invalidity

Sheppard Mullin Richter & Hampton LLP

Koss Corporation v. Bose Corporation

This case addresses the application of issue preclusion in relation to the validity of three patents. In particular, this case focuses on the implications of decisions made during the dismissal of pending litigations and...more

Akin Gump Strauss Hauer & Feld LLP

Merger of District Court Dismissals Torpedoes Appeal from PTAB Decision at Federal Circuit

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more

McDermott Will & Emery

Beware Equitable Doctrine of Issue Preclusion in Multiparty, Multivenue Patent Campaigns

Addressing for the first time whether an invalidity order merges with a voluntary dismissal for purposes of finality, the US Court of Appeals for the Federal Circuit held that an interlocutory order merges with the final...more

WilmerHale

Federal Circuit Patent Watch: Printed Matter Doctrine Applies to Communicative Content, Not All Communications

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  IOENGINE, LLC V. VIDAL (21-1227 Lourie, Chen, Stoll) - Chen, J.  The Court reversed in part and affirmed in part the Final Written Decisions of the Patent Trial and...more

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

PTAB Strategies and Insights - September 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

McDermott Will & Emery

PTAB May Reject Substitute Claims Under Any Basis of Patentability

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board...more

Knobbe Martens

Costs Awarded to Defendant After Case Dismissed for Mootness

Knobbe Martens on

B.E. TECHNOLOGY, L.L.C. v. FACEBOOK, INC. Before Lourie, Plager, and O’Malley. Appeal from the United States District Court for the Western District of Tennessee. Summary: A decision on the merits is not a prerequisite...more

McDermott Will & Emery

No Concrete Controversy if There Are No Claims

McDermott Will & Emery on

In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more

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