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Intrinsic Evidence

Haug Partners LLP

Intrinsic Test Called into Question as Ninth Circuit Affirms Jury Verdict for Kat Von D

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In a precedential decision, the Ninth Circuit affirmed a jury verdict finding that celebrity tattoo artist Katherine Von Drachenberg, famously known as Kat Von D, did not infringe photographer Jeffrey Sedlik’s copyright in...more

Ervin Cohen & Jessup LLP

When Substantial Similarity Becomes Subjective: The Ninth Circuit’s Warning in Sedlik v. Von Drachenberg

On January 2, 2026, the Ninth Circuit issued a closely watched copyright decision in Sedlik v. Von Drachenberg. The decision’s significance lies not in the verdict itself, but in the Court’s unusually candid critique of the...more

Lathrop GPM

“Flawed,” “Distorted” and “An Empty Promise”- Judges Call to Fundamentally Overhaul the Ninth Circuit’s Test for Copyright...

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In a decision that may foreshadow major doctrinal change, two judges from the Ninth Circuit Court of Appeals have urged the court to rethink – or abandon – its long‑standing framework for assessing substantial similarity in...more

McDermott Will & Schulte

Top Gun and all that jazz: “Substantial similarity” in the Ninth Circuit

Two January 2026 decisions from the US Court of Appeals for the Ninth Circuit confirm that copyright infringement requires substantial similarity in protectable expression, proven through both extrinsic and intrinsic tests....more

Sheppard

Claim Construction: Indefinite or Clerical Error?

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This Federal Circuit opinion analyzes the “very demanding standard” of judicial correction of erroneous wording of a patent claim. Background - Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent...more

McDermott Will & Schulte

Well, well, well: Indefinite claims turn out to be a typo

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit reversed a district court ruling that invalidated patent claims for indefiniteness, finding that the disputed language was a minor clerical error. Canatex Completion Solutions,...more

Hudnell Law Group

Federal Circuit Weighs the Need for Claim Construction at the Rule 12 Stage

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On October 18, 2024, the Federal Circuit issued its opinion in UTTO Inc. v. Metrotech Corp., No. 2023-1435, 2024 U.S. App. LEXIS 26340, (Fed. Cir. Oct. 18, 2024) addressing the propriety of conducting claim construction at...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2024 #2

Parkervision, Inc. v. Qualcomm Inc., Appeal Nos. 2022-1755, 2024-2221 (Fed. Cir. Sept. 6, 2024) In this week’s Case of the Week, the Federal Circuit weighed in again on a 13-year-old patent dispute concerning Qualcomm’s...more

McDermott Will & Schulte

Sliced and Diced: Operating Manuals Are Printed Publications

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more

Axinn, Veltrop & Harkrider LLP

Is a Claim Term’s Whole Greater Than the Sum of Its Parts?

Claim terms are usually given their ordinary meaning in light of the intrinsic evidence, but what if the ordinary meaning of two claim terms presents an obvious contradiction? That is the issue that the Federal Circuit will...more

Sheppard

Federal Circuit Vacates District Court’s Claim Construction of the Term “Pipette Guiding Mechanism”

Sheppard on

In Malvern Panalytical Inc. v. TA Instruments-Waters LLC, the Federal Circuit addressed the proper construction of the claim term “pipette guiding mechanism.” Specifically, the Federal Circuit found the plain and ordinary...more

McDermott Will & Schulte

Resorting to Extrinsic Evidence Is Necessary When Intrinsic Evidence Is Muddied

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit determined that the limitation “a pH of 13 or higher” could not be construed using the asserted patents’ intrinsic evidence and therefore remanded to the district court with...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2023 #2

Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, Appeal No. 2022-1706 (Fed. Cir. Nov. 7, 2023) In this week’s Case of the Week, the Federal Circuit dismissed appellant Allgenesis’s appeal of an inter...more

Sheppard

Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, 2022-1492 (Fed. Cir. Sept 1, 2023)

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This case addresses the validity of two patents asserted against wireless communications technologies. In particular, this case discusses claim construction and post-issuance claim amendments that broaden the scope of...more

McDermott Will & Schulte

Context Is Key in Claim Construction

The US Court of Appeals for the Federal Circuit reiterated that intrinsic evidence trumps extrinsic evidence in determining the meaning of claim terms. Sequoia Technology, LLC v. Dell, Inc. et al., Case Nos. 21-2263; -2264;...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2023 #3

Lite-Netics, LLC v. Nu Tsai Capital LLC, Appeal No. 2023-1146 (Fed. Cir. Feb. 17, 2023) In an appeal from the U.S. District Court for the District of Nebraska, the Federal Circuit addressed whether the district court...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (January 17 – January 20): “Larger Than” Or “Large Enough”?

If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this...more

McDermott Will & Schulte

Dictionaries Don’t Know Best: The Intrinsic Record Prevails (Again)

The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more

McDermott Will & Schulte

Terms of Degree Not Always Indefinite

The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more

McDermott Will & Schulte

Improper Claim Construction Requires Partial Remand of Obviousness Determination

The US Court of Appeals for the Federal Circuit issued decisions in two separate inter partes reviews (IPRs), one involving a patent related to radio frequency communication systems and the other involving a patent related to...more

McDermott Will & Schulte

Rounding Error: Intrinsic Evidence Informs Plain and Ordinary Meaning

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Vacating a stipulated infringement judgment based on an incorrect claim construction, the US Court of Appeals for the Federal Circuit explained that it is improper to isolate claim language from the intrinsic evidence when...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (October 25-29): Taking the Pulse of Another § Decision

While there may have been no public tricks or treats from the Federal Circuit last week, the Court still managed to issue a range of precedential and non-precedential decisions. Below we provide our usual weekly statistics...more

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

PTAB Strategies and Insights - August 2021: Federal Circuit Remands for Board's Improper Use of Extrinsic Evidence During Claim...

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the...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

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