News & Analysis as of

Inter Partes Review (IPR) Proceeding Patent Trial and Appeal Board En Banc Review

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2024

Mirror Worlds Technologies, LLC v. Meta Platforms, Inc., Appeal Nos. 2022-1600, -1709 (Fed. Cir. Dec. 4, 2024) In this appeal from the United States District Court for the Southern District of New York, the Federal...more

Fenwick & West LLP

En banc Hearing Petition Filed on Recent Fed. Circ. Collateral Estoppel Decision

Fenwick & West LLP on

The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

Fenwick & West LLP on

On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more

Fox Rothschild LLP

Federal Circuit Revamps Obviousness Test for Design Patents

Fox Rothschild LLP on

In a recent en banc panel decision, the U.S. Court of Appeals for the Federal Circuit overruled a decades-old test for obviousness of design patents. Reasoning that the old test was “improperly rigid,” the Federal Circuit...more

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

2023 Design Patents Year in Review: Analysis & Trends: U.S. Court of Appeals for the Federal Circuit: New Chapters in Two Ongoing...

In 2023, the Court of Appeals for the Federal Circuit issued three opinions regarding U.S. design patents. The three 2023 opinions are Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., LKQ...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2023

Medytox, Inc. v. Galderma S.A., Appeal No. 2022-1165 (Fed. Cir. June 27, 2023) In this week’s Case of the Week, the Federal Circuit upheld an application by the Patent Trial and Appeal Board of its Pilot Program...more

Foley & Lardner LLP

. License Agreement Not Enough for Standing on Appeal of an IPR Apple Inc. v. Qualcomm Inc.

Foley & Lardner LLP on

In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm. Background - Qualcomm sued...more

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

Still No Same Party Joinder and Joinder of New Issues through 35 U.S.C. § 315(c)

The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept....more

Mintz - Intellectual Property Viewpoints

“Anything Goes” – Federal Circuit Says PTAB Can Use Any Means to Knock Out Substitute Claims (Uniloc v. Hulu: Part 2)

Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more

Mintz - Intellectual Property Viewpoints

Dead on Arrival? Federal Circuit Majority Finds That Substitute Claims Live On (Uniloc v. Hulu: Part 1)

Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

McDonnell Boehnen Hulbert & Berghoff LLP

U.S. Government Petitions for Certiorari in Arthrex Case

Last fall, the Federal Circuit decided in Arthrex, Inc. v. Smith & Nephew, Inc. that Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB) were principal officers and thus had been improperly...more

Stinson LLP

Federal Circuit Denies En Banc Rehearing on PTAB Constitutionality

Stinson LLP on

On March 23, 2020, the U.S. Court of Appeals for the Federal Circuit denied the parties’ petition for an en banc rehearing in Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140....more

Goodwin

All Sides Dispute Federal Circuit Decision on PTAB's Constitutionality

Goodwin on

Late in the day on December 16, 2019, three different petitions asked the full Federal Circuit to overturn a panel’s decision that members of the Patent Trial and Appeal Board (PTAB) were appointed in violation of the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Wi-Fi One v. Broadcom, 878 F.3D 1364 (FED....

Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Denies RPX’s Request for en banc Review in Applications in Internet Time v. RPX

Continuing our coverage of the Federal Circuit’s Applications in Internet Time, LLC v. RPX Corp. (“Internet Time”) decision, on Tuesday, October 23, 2018, the Federal Circuit denied RPX’s request to rehear the case en banc....more

McDermott Will & Emery

Dismissal “Without Prejudice” Does Not Nullify Service of Complaint

McDermott Will & Emery on

Addressing 35 USC § 315(b), the US Court of Appeals for the Federal Circuit sat en banc to determine whether dismissal “without prejudice” would extinguish the effect of a previously served infringement complaint, an event...more

Mintz - Intellectual Property Viewpoints

RPX Requests en banc Review in Applications in Internet Time v. RPX

On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which held that the Patent Trial and Appeal Board...more

Latham & Watkins LLP

En Banc Federal Circuit Overturns PTAB’s IPR Time-Bar Ruling

Latham & Watkins LLP on

Accused patent infringers may be time-barred by service of a complaint in a lawsuit that was later voluntarily dismissed without prejudice. Key Points: ..Under the PTAB’s old precedent, voluntary dismissals without...more

McDonnell Boehnen Hulbert & Berghoff LLP

St. Regis Mohawk Tribe Petitions Federal Circuit for En Banc Review of Panel Decision Voiding Sovereign Immunity in Inter Partes...

On July 22nd, the Federal Circuit issued its opinion in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., affirming the decision by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office that...more

Fish & Richardson

En Banc Federal Circuit: Patentee’s Service of Complaint, Followed by Voluntary Dismissal, Triggers IPR Clock

Fish & Richardson on

On August 16, 2018 the en banc Federal Circuit held that a patentee’s initial service of a complaint triggers the one-year period for filing of an IPR petition—even if the complaint was voluntarily dismissed without prejudice...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2018 #5

Applications in Internet Time, LLC v. RPX Corp., Appeal Nos. 2017-1698, et al. (Fed. Cir. July 9, 2018) (unsealed July 24, 2018) In a lengthy decision on an issue of first impression, the Federal Circuit addressed the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2018 #3

PATENT CASE OF THE WEEK - Polara Engineering Inc. v. Campbell Company, Appeal Nos. 2017-1974, -2033 (Fed. Cir. July 10, 2018) In this wide-ranging opinion, the Court provided a rare and lengthy opinion on the public use...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018

Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more

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