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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
When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton...more
It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more
Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...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
Addressing the issues of claim construction and the requisite expert qualifications to testify on obviousness and anticipation, the US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board decision...more
In this edition of The Precedent, we outline the Federal Circuit's decision in HD Silicon Solutions LLC v. Microchip Technology Inc. In HD Silicon Solutions LLC, the Federal Circuit addressed an appeal from the USPTO Patent...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability finding, explaining that an anticipation analysis for a product-by-process claim focuses on the product and not the process....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
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
Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., No. 2023-2346 (Fed. Cir. (PTAB) Jan. 14, 2025). Opinion by Prost, joined by Lourie and Stark....more
Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success - In Cytiva Bioprocess R&D Ab v. Jsr Corp., Appeal No. 23-2074, the Federal Circuit held that a claim limitation merely reciting an...more
Precedential and Key Federal Circuit Opinions - 1. CYTIVA BIOPROCESS R&D AB v. JSR CORP. [OPINION] (2023-2074, 12/4/2024) (Prost, Taranto, Hughes) - Prost, J. The Court affirmed the PTAB’s IPR determination that...more
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: USPTO Director Vidal to Step Down - On November 12, Under Secretary of...more
Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more
In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more
In Ioengine, LLC v. Ingenico Inc. No. 2021-1227, 2021-1331, 2021-1332 (Fed. Cir. May 03, 2024), the case addresses the patentability/validity of three patents. In particular, this case discusses the application of the printed...more
In Sisvel International S.A. v. Sierra Wireless, Inc. et al., Nos. 22-1493, 22-1547 (Fed. Cir. 2023), Sierra Wireless challenged claims 1-10 of Sisvel’s U.S. Patent No. 6,529,561 (“the ’561 patent”) in an inter partes review....more
Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., Appeal Nos. 2022-1410, -1554 (Fed. Cir. January 9, 2024) In this week’s Case of the Week, the Federal Circuit affirmed two inter partes review...more
The importance of claim construction, and how construing the same term facing a challenge based on different prior art in separate inter partes review proceedings can result in contrary findings on invalidity, was illustrated...more
Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent...more
In Apple Inc. v. Corephotonics, LTD., the court addressed two final written decisions in inter partes review (“IPR”) proceedings and in particular (1) whether the Patent Trial and Appeal Board’s (“PTAB” or “Board”) claim...more
Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1532, -1533 (Fed. Cir. Aug. 7, 2023) In this week’s case of the week, the Federal Circuit re-affirmed existing precedent that in inter partes review proceedings before...more
Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more