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Patents Intellectual Property Protection Claim Construction

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

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...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

Venable LLP

Spotlight On: Prolia® / Xgeva® (denosumab) / Jubbonti® / Wyost® (denosumab-bbdz) / Ospomyv™ / Xbryk™ (denosumab-dssb) / Stoboclo®...

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Denosumab Challenged Claim Types in Litigation: Claims are counted in each litigation, so claims from the same patent challenged in multiple litigations are counted more than once. Within each litigation a claim is counted...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

Sheppard Mullin Richter & Hampton LLP

2024 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are excited to present the second edition of Sheppard Mullin’s “Year in Review” report, which provides a comprehensive summary of the key precedential Federal Circuit decisions related to patent law in 2024. Building on...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

Baker Botts L.L.P.

First Quarter 2025 Federal Circuit Law Snapshot

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...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

Jones Day

Federal Circuit Affirms Despite Claim Construction Error

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The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more

McDermott Will & Emery

Get a Grip: Not All Cords Have Handles

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The US Court of Appeals for the Federal Circuit vacated a district court’s grant of summary judgment of noninfringement because the district court improperly narrowed a claim term during its construction. IQRIS Technologies...more

Knobbe Martens

Where Method Claim Steps Are Connected by “And,” a Covered Method Must Perform Each Step

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SIERRA WIRELESS, ULC V. SISVEL S.P.A. Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. The Board erred by finding method-claim steps connected by “and” to be conditional and by never...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Xencor, Inc.

In re: Xencor, Inc., Appeal No. 2024-1870 (Fed. Cir. Mar. 13, 2025) Our case of the week is an appeal from a decision of the Appeals Review Panel of the Patent Trial and Appeal Board, concerning Xencor’s patent application...more

A&O Shearman

Federal Circuit Expands Economic Prong Of Section 337 Domestic Industry Requirement

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Lashify, Inc. is an American company, with headquarters and employees in the United States, that distributes, markets, and sells eyelash extensions (and cases and applicators for the eyelash extensions) in the United States....more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Vacates Claim Construction But Upholds PTAB’s Determination of Obviousness and Motivation to...

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

Akin Gump Strauss Hauer & Feld LLP

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Anticipation Analysis for Product-By-Process Claims

In Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. Mar. 13, 2025), the Federal Circuit upheld the Patent Trial and Appeal Board’s decision holding that U.S. Patent No. 9,803,176 (“the ’176 patent”) was not inherently...more

Jones Day

Federal Circuit Rules That Order Of Steps Sometimes Does Matter

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Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more

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

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

BakerHostetler

A Later-Discovered Improvement to an Invention Cannot Be Used To Reach Back and Invalidate an Earlier-Filed Patent

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Novartis markets and sells a combination therapy of valsartan and sacubitril under the brand name Entresto® for the treatment of various forms of heart failure. MSN submitted an Abbreviated New Drug Application seeking...more

Smart & Biggar

Avoiding a finding of ambiguity and ensuring patent validity: the importance of a comprehensive disclosure and defining coined...

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On June 7, 2024, the Federal Court issued its Judgment and Reasons in Tekna Plasma Systems Inc v AP&C Advanced Powders & Coatings Inc ( 2024 FC 871), finding all claims of the Defendant’s Canadian Patent No 3,003,502 (502...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Sidesteps Ruling on the Reverse Doctrine of Equivalents Theory in Steuben Foods Inc. v. Shibuya...

In this edition of The Precedent, we outline the decision in Steuben Foods Inc. v. Shibuya Hoppmann Corp. This case addresses whether the reverse doctrine of equivalents (RDOE) is a viable defense to patent infringement....more

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

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Written Description and Enablement Depend on What a Patent 'Claims,' Not What the Claims Cover

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit...more

Knobbe Martens

Every Word Counts: Specification Naming Conventions Can Limit Claim Scope

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A patent’s specification established a naming convention that applied to terms in the patent’s claims. Microchip Technology filed an IPR, arguing all claims of HD Silicon Solutions’ patent were invalid. The challenged patent...more

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