News & Analysis as of

Patent Ownership Patent Trial and Appeal Board Appeals

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

Wilson Sonsini Goodrich & Rosati

Federal Circuit Revives CRISPR-Cas9 Patent Priority Dispute

The CRISPR-Cas9 patent landscape remains complex and unsettled. The Federal Circuit’s latest decision in University of California v. Broad Institute1 revived the high-stakes dispute between UC2 and Broad3 over foundational...more

McDermott Will & Emery

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

McDermott Will & Emery on

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

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

Fish & Richardson on

Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

Knobbe Martens

IPR Standing Arguments Not Presented to the Board Are Forfeited

Knobbe Martens on

APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC - Before Moore, Prost, and Stoll. Appeal from the Patent Trial And Appeal Board. A patent owner forfeits its argument that an IPR petitioner lacks standing under 35 U.S.C....more

Knobbe Martens

Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof

Knobbe Martens on

Because there are different burdens of proof in IPRs and district court, collateral estoppel does not preclude a patent owner from asserting claims that are immaterially different from claims canceled in an IPR....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

A&O Shearman

Federal Circuit Holds That PTAB Has Jurisdiction To Review Expired Patents

A&O Shearman on

On, January 27, 2025, the United States Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a decision from the Patent Trial and Appeal Board (“PTAB”) on certain claims of Gesture Technology...more

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

McDermott Will & Emery

A Lesson in Judicial Principles: No Dismissal After Decision

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The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but...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

McDermott Will & Emery

Cellect Your Weapon: Navigating Potential Arguments in the Aftermath of In re Cellect

McDermott Will & Emery on

In In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), the US Court of Appeals for the Federal Circuit held that a later-expiring patent can be invalid for obviousness-type double patenting (ODP) in view of an earlier-expiring,...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

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

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023)...

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2024 #2

Dexcom, Inc. v. Abbott Diabetes Care, Inc., Appeal No. 2023-1795 (Fed. Cir. Jan. 3, 2024) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a district court’s denial of DexCom’s motion to...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

Bradley Arant Boult Cummings LLP

Some Touch Up Needed: The Federal Circuit Partially Confirms the PTAB’s View of Analogous Art

In Corephotonics, Ltd. v. Apple Inc., the Federal Circuit partially signed off on Apple’s win before the Patent Trial and Appeal Board (PTAB) invalidating a number of patents owned by Corephotonics relating to dual-aperture...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Preliminary Means Preliminary

The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more

Jones Day

Common Inventorship And Technology Insufficient For 325(d) Denial

Jones Day on

The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more

McDermott Will & Emery

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...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

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

Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a...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

Foley & Lardner LLP

Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

Foley & Lardner LLP on

In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a...more

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