New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
I have previously written extensively on the ongoing legal battle between Nintendo / The Pokémon Company (referred to herein collectively as simply "Nintendo") and PocketPair over PocketPair's popular video game Palworld....more
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more
Recentive Analytics, Inc. v. Fox Corp., et al., No. 2023-2437 (Fed. Cir. (D. Del.) Apr. 18, 2025). Opinion by Dyk, joined by Prost and Goldberg (sitting by designation). Recentive sued Fox for infringing four patents that...more
AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor...more
In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more
In a precedential opinion issued on March 4, 2025, in Restem, LLC v. Jadi Cell, LLC, No, 23-2054, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB’s claim construction and ruling that product-by-process...more
Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025) Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based...more
The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more
Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a...more
When there are fewer design elements in a design claim or when the individual elements of the design seem commonplace in isolation, it can be easy to overlook the inventive effort that went into developing a design. Rather...more
Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that the Federal Circuit always says never, patent publications...more
Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more
HD Silicon Solutions LLC v. Microchip Technology, Inc., No. 2023-1397 (Fed. Cir. (PTAB) Feb. 6, 2025). Opinion by Lourie, joined by Stoll and Cunningham....more
Appellate courts issued a variety of notable intellectual property (IP) cases in 2024, including cases touching on Orange Book listings, extraterritoriality, willful infringement, design patent obviousness, and public...more
In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as...more
The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims....more
Minocin® (minocycline) - Case Name: Melinta Therapeutics, LLC v. Nexus Pharms., Inc., Civ. No. 21-2636, 2024 WL 4799896 (N.D. Ill. Nov. 15, 2024) (Kness, J.) Drug Product and Patent(s)-in-Suit: Minocin® (minocycline);...more
On January 14, 2025, the United States Court of Appeals for the Federal Circuit issued a precedential decision in Lynk Labs, Inc. v. Samsung Electronics Co., No. 23-2346 (Fed. Cir. Jan. 14, 2025), addressing whether a...more
Report summary -Knobbe Martens' inaugural Federal Circuit Year in Review report offers a comprehensive overview of the most significant Federal Circuit rulings of 2024 and how they could shape IP law in the years ahead....more
OxyContin® (oxycodone HCl) - Case Name: Purdue Pharma L.P. v. Accord Healthcare, Inc., No. 2023-1953, 2024 WL 5244764 (Fed. Cir. Dec. 30, 2024) (Circuit Judges Prost, Reyna, and Taranto presiding; Opinion by Prost, J.)...more
Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more
The landscape of design protection has seen significant developments on both sides of the Atlantic, with the U.S. undergoing a pivotal shift in design patent law following the Federal Circuit’s decision in LKQ Corporation v....more