New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. (W.D. Tex.) May 23, 2025). En banc opinion by Moore, joined by Lourie, Dyk, Prost, Taranto, Chen, Hughes, and Stoll. Opinion concurring in part and dissenting in part by...more
On October 29, 2024, BabyBjörn AB (“BabyBjörn”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,786,055 (“the ’055 Patent”), which is assigned to The ERGO Baby Carrier, Inc. (“ERGO Baby”). ...more
In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more
On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more
On April 23, 2025, the Federal Circuit rendered an opinion in Valve Corp. v. Ironburg Inventions Ltd. surrounding U.S. Patent No. 9,289,688 (the '688 patent"). This marks the second time that the Federal Circuit has weighed...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
On March 7, 2025, the Federal Circuit issued a decision resolving the ongoing patent litigation between AliveCor and Apple concerning methods of cardiac monitoring purportedly employed in certain of Apple’s Watches. The...more
This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness. Gesture Technology Partners, LLC is the owner of U.S....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
Wash World Inc. v. Belanger Inc., No. 2023-1841 (Fed. Cir. (E.D. Wis.) Mar. 24, 2025). Opinion by Stark, joined by Lourie and Prost. Belanger sued Wash World for infringement of a patent related to a spray type car wash...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
AMP Plus, Inc. v. DMF, Inc., No. 2023-1997 (Fed. Cir. (PTAB) Mar. 19, 2025). Opinion by Reyna, joined by Lourie and Bryson. DMF owns a patent directed to a compact recessed lighting system that can be installed in a standard...more
On March 4, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision in Restem, LLC v. Jadi Cell, LLC, No. 23-2054, 2025 WL 679195, at *1 (Fed. Cir. Mar. 4, 2025), finding that the patent...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
In HD Silicon Solutions LLC V. Microchip Technology Inc., Appeal No. 23-1397, the Federal Circuit held that all but one patent claim were invalid as obvious because the claimed material, as properly construed, was disclosed...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 door may now be open for additional challenges to patents covering mRNA vaccine technologies, paving the way for increased competition in the mRNA vaccine space. On Wednesday, March 5, 2025, the United States Patent...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
Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...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
Precedential and Key Federal Circuit Opinions - HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. [OPINION] (2023-1397, 2/6/2025) (Lourie, Stoll, Cunningham) - Lourie, J. The Board affirmed the Final Written...more