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Patent Litigation Patents Obviousness

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

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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

Alston & Bird

Patent Case Summaries | Week Ending April 25, 2025

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Qualcomm Inc. v. Apple Inc., et al., Nos. 2023-1208, -1209 (Fed. Cir. (PTAB) Apr. 23, 2025). Opinion by Reyna, joined by Lourie and Prost. Qualcomm owns a patent related to integrated circuit devices using multiple power...more

Jones Day

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

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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

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

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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

McDermott Will & Emery

Transatlantic Terminology: Skilled Artisan Could Equate UK, US Word Meanings

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination, finding that a skilled artisan would have found the term “sterile” in a UK publication to mean the same as...more

Proskauer - The Patent Playbook

Federal Circuit Affirms Stem Cell Product-by-Process Claims: Lessons in Claim Construction and Inherency from Restem LLV v. Jadi...

The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

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SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sage Products, LLC v. Stewart (Fed. Cir. 2025)

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

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

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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

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

Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more

Jones Day

Expert Testimony Supporting POPR Can Be An Effective Strategy

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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

Alston & Bird

Patent Case Summaries | Week Ending April 4, 2025

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In re: Forest, No. 2023-1178 (Fed. Cir. (PTAB) Apr. 3, 2025). Opinion by Chen, joined by Taranto and Schall.  In 2016, an inventor filed a patent application that claimed priority to an application filed in 1995. The Patent...more

Sheppard Mullin Richter & Hampton LLP

Don’t Get Lazy, Timely Complete Your Arguments

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

Sheppard Mullin Richter & Hampton LLP

You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review

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

McDermott Will & Emery

A Patent Without a Pulse: Provisional Rights Don’t Outlive the Patent

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Limits Reliance on Provisional Priority Date Under Section 102(e)(1)

On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to...more

Jones Day

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more

Knobbe Martens

Federal Circuit Review | March 2025

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Limits of Inherent Anticipation in Product-by-Process Claims - In Restem, LLC v. Jadi Cell, LLC, Appeal No. 23-2054, the Federal Circuit held that inherency in product-by-process claims requires the prior art to inevitably...more

McDonnell Boehnen Hulbert & Berghoff LLP

Recor Medical, Inc. v. Medtronic Ireland Mfg. (Fed. Cir. 2025)

The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims,...more

McDermott Will & Emery

Detour Ahead: New Approach to Assessing Prior Art Rejections Under § 102(e)

The US Court of Appeals for the Federal Circuit established a more demanding test for determining whether a published patent application claiming priority to a provisional application is considered prior art under pre-America...more

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

The Federal Circuit Opines on a Motivation to Combine

The Federal Circuit’s holding in United Servs. Auto. Ass’n v. PNC Bank N.A., No. 2023-2171, 2025 WL 339662 (Fed. Cir. Jan. 30, 2025) reversed a Patent Trial and Appeal Board (“PTAB”) decision finding no motivation to combine....more

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

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Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

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

Fenwick & West LLP

Healthtech Patents: What Alivecor v. Apple Means for AI-Powered Innovation

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A major Federal Circuit ruling just sent a clear message to AI-driven healthtech companies: AI alone won’t get you a patent....more

McDermott Will & Emery

When “It’s Obvious” Just Isn’t Enough: Challenger’s Burden to Prove Obviousness

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision that a patent was not obvious because the petitioner failed to show sufficient support of obviousness based on prior art. AMP...more

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