News & Analysis as of

Patent Ownership Appeals Claim Construction

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

Broadening on Reissue is Based on the Scope of the Language of the Claims, Not the Original Intention of the Applicant

Takeaways: - Claim construction for determining whether reissue claims are improperly broadened is based on fundamental claim construction cannons and not applicant intentions. - Patent Owners should check patented claims...more

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

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

McDermott Will & Emery

Neck or Nothing? “Quotation” Invalidates On-Sale Bar

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The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act...more

McDermott Will & Emery

Equivalence Requires Element-by-Element Proof With Linking Argument

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the...more

McDermott Will & Emery

PTAB MTA Pilot Program to the Rescue

On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

McDermott Will & Emery

That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

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The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Shaping the PTAB’s Rulemaking and Rule Enforcement...

A trio of cases this past year illustrate a trend of increasing importance of the Patent Office’s rulemaking and enforcement. Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023) The Federal Circuit’s...more

Sheppard Mullin Richter & Hampton LLP

Axonics, Inc. v. Medtronic, Inc. Nos. 2022-1532, 2022-1533, (Fed. Cir. August 7, 2023)

This case addresses the ability of a petitioner in an IPR to present new evidence in a reply brief, particularly where the patent owner proposes a new claim construction in its patent owner response....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023

In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the...more

McDermott Will & Emery

New Claim Construction in Patent Owner’s Post-Initiation IPR Response? Sure, Charge Away

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Addressing the issue of new claim constructions presented by a patent owner after the institution of inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a petitioner is entitled...more

McDermott Will & Emery

Bad Connection: Claim Construction Argument without Explanation Given No Weight

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed...more

McDermott Will & Emery

Delayed Disclaimer: Patent Owner Arguments Made during IPR Not a Claim Limiting Disclaimer in That Proceeding

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Repeating a conclusion from an earlier non-precedential opinion in VirnetX, the US Court of Appeals for the Federal Circuit held that the Patent Trial & Appeal Board (Board) need not accept a patent owner’s arguments as a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2022 #3

American National Manufacturing Inc. v. Sleep Number Corporation, Appeal Nos. 2021-1321, -1323, -1379, -1382 (Fed. Cir. Nov. 14, 2022) - In an appeal from inter partes review proceedings before the Patent Trial and Appeal...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2022 #2

Littelfuse, Inc. v. Mersen USA EP Corp., Appeal No. 2021-2013 (Fed. Cir. Apr. 4, 2022)‎ - Our Case of the Week focuses on the issue of claim construction, and, more specifically, the doctrine ‎of claim differentiation....more

McDermott Will & Emery

Establishing Indefiniteness Requires More Than Identifying “Unanswered Questions”

The US Court of Appeals for the Federal Circuit reversed a district court finding of indefiniteness for focusing solely on the language of the claims and ignoring the specification and prosecution history. Nature Simulation...more

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

In Qualcomm v. Intel, Federal Circuit Defends Procedural Rights Before the PTAB

Last month, in Qualcomm Inc. v. Intel Corp., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on six inter partes review (“IPR”) decisions that...more

McDermott Will & Emery

What You Say Can and Will be Used Against You – Prosecution History and Prior Infringement Arguments

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Noting patent owner’s prior litigation statements, the US Court of Appeals for the Federal Circuit upheld a district court ruling that a clear and unmistakable disclaimer in the prosecution history affected claim construction...more

Holland & Knight LLP

Federal Circuit Confirms Data Privacy Patent Is an Invalid Abstract Idea under Section 101

Holland & Knight LLP on

The U.S. Court of Appeals for the Federal Circuit looked at a patent directed to a data privacy system that described users operating mobile device apps to "socialize, bank, shop, and navigate." As users operate such apps,...more

McDermott Will & Emery

Only Human: Broadest Reasonable Interpretation Standard Applies to Intentionally Expired Patent

McDermott Will & Emery on

Affirming an invalidity finding by the Patent and Trial Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found that the claims of the now-expired patent should be construed under the broadest reasonable...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2018 #2

PATENT CASE OF THE WEEK - Worlds Inc. v. Bungie, Inc., Appeal Nos. 2017-1481, -1546, -1583 (Fed. Cir. Sept. 7, 2018) In appeals from three inter partes reviews, the Federal Circuit vacated the PTAB’s decision...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Droplets, Inc. v. E*TRADE Bank., Appeal No. 2016-2504 (Fed. Cir. 2018)?- In an appeal from an inter partes review, the Federal Circuit affirmed a decision by the PTAB invalidating a patent...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

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