News & Analysis as of

Inter Partes Review (IPR) Proceeding Prior Art Precedential Opinion

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

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

Fenwick & West LLP

En Banc Federal Circuit Overrules Longstanding Test for Design Patent Obviousness

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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: 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

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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

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: 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

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

WilmerHale

Federal Circuit Patent Watch: Assignor estoppel applies to claims that are not "materially broader" than the originally assigned...

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Precedential Federal Circuit Opinions - In Re MCDONALD [OPINION] (2021-1697, 8/10/2022) (Newman, Stoll, and Cunningham) - Cunningham, J. The Court affirmed a PTAB decision rejecting reissue claims under 35 U.S.C. §...more

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

2021 Design Patents Year in Review: Analysis and Trends: US Court of Appeals for the Federal Circuit: Seismic Shifts in §102 and...

In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more

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

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

Alston & Bird

Patent Case Summaries - February 2022 #1

Alston & Bird on

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

Morrison & Foerster LLP - Federal Circuitry

Last Two Weeks in the Federal Circuit (December 27 - January 7)

The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant).  In this post, we take a look back at how the Court closed out 2021 and...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 29 - December 3): COVID-19 Vaccine Patents at the PTAB

Last week the Federal Circuit was gearing up for its December argument sitting, but the Court still found time to issue several decisions. Below we provide our usual weekly statistics and our case of the week—our highly...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 1-5): Killing Bacteria with Light – An Unexpected Result?

Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit longer for her first authored opinion. Below we provide our usual...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of...more

WilmerHale

CAFC Patent Cases - April 2021

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Precedential Federal Circuit Opinions - ..WI-LAN INC. v. SHARP ELECTRONICS CORPORATION [OPINION]  (2020-1041, April 6, 2021) (DYK, TARANTO, and STOLL) - Dyk, J.  Affirming related district court judgments holding...more

Jones Day

PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial

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The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you...more

Jones Day

PRECEDENTIAL: Stipulation Roadmap for Fintiv Factor Four

Jones Day on

It has now been more than seven months since the PTAB designated Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), as a precedential decision. Under this precedent, the PTAB applies a six factor,...more

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

Two Key Takeaways from VidStream LLC v. Twitter

In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

Last week, the Federal Circuit was relatively busy, issuing five precedential opinions and three other written decisions.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection...more

Sunstein LLP

Fresh is Best and Stale Will Fail: The PTAB Explains Its Logic in Refusing to Institute an IPR

Sunstein LLP on

The Patent Act allows anyone to try to initiate an inter partes review (IPR), which is a proceeding before the Patent Trial and Appeal Board (PTAB) challenging one or more claims of a patent. Any such challenge may be based...more

Jones Day

INFORMATIVE: Conference Paper Public Accessibility – Insufficient Proof

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As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more

Jones Day

PRECEDENTIAL: IPRs and Examination have Different Standards for Establishing a Printed Publication

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As was previously noted, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more

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