News & Analysis as of

Inter Partes Review (IPR) Proceeding Precedential Opinion

WilmerHale

PTAB/USPTO Update - April 2025

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On March 10, John Squires was officially nominated to be Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office....more

WilmerHale

Federal Circuit Patent Watch: FDA Filing Can Create Personal Jurisdiction; “Compelling” Arguments that Reverse Doctrine of...

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Precedential and Key Federal Circuit Opinions - STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION [OPINION] (2023-1790, 1/24/2025) (Moore, Hughes, Cunningham) - Moore, Chief J. The Court reversed the district...more

Dorsey & Whitney LLP

When Is a Published Patent Application Prior Art?

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In a precedential opinion entered on January 14, 2025, the United States Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“PTAB”) invalidating claims of a patent on...more

WilmerHale

Federal Circuit Patent Watch: Orange Book Patents Can Be Delisted If They Do Not Claim Active Ingredient

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Precedential and Key Federal Circuit Opinions - TEVA BRANDED PHARMACEUTICAL PRODUCTS R&D, INC. v. AMNEAL PHARMACEUTICALS OF NEW YORK, LLC [OPINION] (2024-1936, 12/20/2024) (Prost, Taranto, Hughes) - Prost, J. The...more

Fish & Richardson

Recapping a Busy Summer for Director Review

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United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Erise IP

Eye on IPRs, August 2024: Federal Circuit Rules on Arguments Not Raised in Request for Rehearing, USPTO Director’s Potential...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024 #4

Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., Appeal No. 2023-1035 (Fed. Cir. August 23, 2024) In its only precedential patent decision this week, the Federal Circuit helped clarify which facts may be...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2024 #2

Natera, Inc. v. NeoGenomics Laboratories, Inc., Appeal Nos. 2024-1324, -1409 (Fed. Cir. July 12, 2024) In its only precedential patent opinion last week, the Federal Circuit affirmed a preliminary injunction that largely...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

WilmerHale

Federal Circuit Patent Watch: Section 285 Does Not Extend to Recovery of IPR Fees

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Precedential and Key Federal Circuit Opinions - 1.  ZIRCON CORP. v. ITC (2022-1649, 05/08/2024) (Lourie, Bryson, and Stark) - Bryson, J. The Court affirmed the Commission’s determination regarding the domestic...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024 #3

Copan Italia SPA v. Puritan Med. Prods. Co. LLC, Appeal No. 2022-1943 (Fed. Cir. May 14, 2024) The Federal Circuit’s only precedential opinion concerning a patent case this week had nothing to do with patent law....more

WilmerHale

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

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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 Spotlight Series with Lestin Kenton

In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more

WilmerHale

Federal Circuit Patent Watch: Raising a new prior art reference in an IPR as a joined petitioner

WilmerHale on

Precedential and Key Federal Circuit Opinions - CYWEE GROUP LTD. v. ZTE (USA) INC., LG ELECTRONICS INC. [OPINION] (2021-1855, 1/18/2023) (Prost, Hughes, and Stoll) - Prost, J. The Court affirmed the Patent Trial and...more

Fish & Richardson

2023 Post-Grant Annual Report

Fish & Richardson on

2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...more

WilmerHale

Federal Circuit Patent Watch: A comparative statement in a patent specification can be “definitional” for purposes of claim...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  PARKERVISION, INC. v. VIDAL [OPINION] (2022-1548, 12/15/2023) (Prost, Wallach, and Chen)* - Chen, J. The Court affirmed the PTAB’s determination that the patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023 #4

Netflix, Inc. v. DivX, LLC, Appeal Nos. 2022-1203, -1204 (Fed. Cir. Oct. 25, 2023) In its only precedential patent opinion this week, the Federal Circuit issued a cautionary note to petitioners in inter partes reviews. ...more

WilmerHale

Federal Circuit Patent Watch: PTAB may make implicit finding of reasonable expectation of success if arguments are intertwined...

WilmerHale on

Precedential and Key Federal Circuit Opinions - BAXALTA INCOPORPORATED v. GENENTECH, INC. [OPINION] (2022-1461, 9/20/2023) (Moore, Clevenger, and Chen) - Moore, C.J. The Court affirmed a district court’s grant of...more

WilmerHale

Federal Circuit Patent Watch: IPR petitioner must be given opportunity to respond to new claim construction arguments by patent...

WilmerHale on

Precedential and Key Federal Circuit Opinions - AXONICS, INC. v. MEDTRONIC, INC. [OPINION] (2022-1532, 2022-1533, 8/7/2023) (Lourie, Dyk, and Taranto) - Dyk, J. The Court vacated and remanded IPR decisions by the PTAB...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Grants En Banc Review of Design Patent Obviousness

WilmerHale on

Precedential Federal Circuit Opinions - MEDYTOX, INC. v. GALDERMA S.A. [OPINION] (2022-1165, 6/27/2023) (Dyk, Reyna, and Stark) - Reyna, J. The Court affirmed a decision by the PTAB in a post-grant review denying an...more

WilmerHale

Federal Circuit Patent Watch: IPR petitioner not required to anticipate and raise analogous art arguments in petition

WilmerHale on

Precedential Federal Circuit Opinions - HIP, INC. v. HORMEL FOODS CORPORATION (2022-1696, 5/2/23) (Lourie, Clevenger, and Taranto) Lourie, J. The Court reversed the district court’s decision regarding joint...more

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

PTAB Strategies and Insights Newsletter - May 2023: Case Highlights: PTAB Precedential and Informative Decisions, Director Review...

This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (April 10 – April 14): IPR Statutory Estoppel, In Two Acts

If the scope of the IPR estoppel statute has been keeping you up at night, our latest case of the (recent) week might help you sleep a little better because it provides clarity on two aspects of the statute’s reach. ...more

Goodwin

Issue 40: PTAB Trial Tracker

Goodwin on

Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

Morgan Lewis

USPTO Director Vidal: Decision on Treatment of Multiple Dependent Claims Is Precedential

Morgan Lewis on

US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the...more

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