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Patents Section 101 Vacated

Jones Day

INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case

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On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2022 #3

ADASA Inc. v. Avery Dennison Corporation, Appeal No. 2022-1092 (Fed. Cir. Dec. 16, 2022) - In the Federal Circuit’s only precedential opinion this week, the Court considered issues arising from infringement litigation...more

Knobbe Martens

Natural Law and Nothing More

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AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS LLC - Before Dyk, Moore, and Taranto. Appeal from the District Court for the District of Delaware. Summary: Claims directed to a law of nature, without more, may not be...more

McDermott Will & Emery

Check Step One: It’s Not Ova until the Court Compares Claims

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The US Court of Appeals for the Federal Circuit reversed a district court’s decision finding a patent directed to a method of sorting particles using flow cytometry technology ineligible under 35 U.S.C. § 101. The Federal...more

Knobbe Martens

Improvements to Operation of an Apparatus Were Not Abstract

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XY, LLC v. TRANS OVA GENETICS, LC - Before Wallach, Plager, and Stoll. Appeal from the United States District Court for the District of Colorado. Summary: Claims directed to improving a method of operating an apparatus...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Axle & Mfg. v. Neapco Holdings LLC (Fed. Cir. 2019)

Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing - Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more

Knobbe Martens

Federal Circuit Review - May 2020

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IPR Petitioners May Not Raise Appointments Clause Challenges Under Arthrex - In CIENA CORPORATION v. OYSTER OPTICS, LLC, Appeal No. 19-2117, affirmatively petitioning for IPR waived the petitioner’s Appointments Clause...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Vacates Summary Judgment of Non-Enablement Where the Only Alleged Non-Enabled Systems Did Not Practice the Claims

In a recent decision, the Federal Circuit vacated the district court’s summary judgment of non-enablement because the systems identified by patent challengers as non-enabled under § 112 were not covered by the claims. Because...more

Knobbe Martens

Federal Circuit Review - October 2019

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The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

Knobbe Martens

Federal Circuit Review - September 2019

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State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

Holland & Knight LLP

D. Utah Cellspin Not Section 101 Intervening Law

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This summer, the District of Utah dismissed Simio’s lawsuit against Flexsim Software, finding that the asserted patent was not patent eligible under Section 101. Simio responded by asking the court to vacate its judgment or,...more

Knobbe Martens

Federal Circuit Review - August 2019

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Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more

Knobbe Martens

A District Court May Not Ignore a Claim Construction Dispute Raised During a Section 101 Challenge

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MYMAIL, LTD. v. OOVOO, LLC - Before Lourie, O’Malley and Reyna. Appeal from the United States District Court for the Northern District of California. Summary: If the parties litigating a § 101 challenge at the pleading...more

Holland & Knight LLP

Federal Circuit: Construe Disputed Claim Terms Before Deciding § 101 Eligibility

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The Federal Circuit – in a split decision – remanded a recent N.D. California decision and held that the district court should have construed a disputed claim term before ruling on patent eligibility. MyMail asserted...more

McDermott Will & Emery

Specific Factual Allegations of Inventive Concept Defeat Motion to Dismiss

Addressing patent eligibility at the motion to dismiss stage of a case, the US Court of Appeals for the Federal Circuit vacated a district court’s grant of a motion to dismiss, finding that the district court improperly...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019 #2

PATENT CASE OF THE WEEK - In re: Global IP Holdings LLC, Appeal No. 2018-1426 (Fed. Cir. July 5, 2019) - The Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board (“PTAB”) upholding an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019

PATENT CASE OF THE WEEK - Elbit Systems Land and C4I Ltd. v. Hughes Network Systems, LLC, Appeal No. 2018-1910 (Fed. Cir. June 25, 2019) - In this appeal from the United States District Court for the Eastern District of...more

Holland & Knight LLP

Federal Circuit Elucidates Berkheimer and Aatrix; Patents Presumed Eligible Under Section 101

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• In a precedential opinion in Cellspin Soft, Inc. v. Fitbit, Inc., et al., the U.S. Court of Appeals for the Federal Circuit vacated both the U.S. District Court for the Northern District of California's Section 101...more

Knobbe Martens

Plausible and Specific Factual Allegations That Aspects of a Claim Are Inventive Are Sufficient to Defeat a Motion to Dismiss for...

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CELLSPIN SOFT, INC. V. FITBIT, INC. ET AL. Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: While not all factual allegations that are...more

Foley & Lardner LLP

Federal Circuit Vacates Natural Product Challenge Of Dietary Supplement Claims

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In Natural Alternatives Internat’l v. Creative Compounds, LLC, the Federal Circuit vacated the district court decision that held the asserted claims invalid under 35 USC § 101 at the pleadings stage. The claims at issue...more

Knobbe Martens

Invalidating Patents Under §101 in the Early Stages of Litigation Still Possible Post-Berkheimer and Aatrix

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Patent eligibility challenges under 35 U.S.C. §101 have been effective tools for defendants to obtain early dismissal of a case without extensive fact finding since the Supreme Court ruling in Alice. Whether a claim recites...more

Knobbe Martens

Federal Circuit Review - September 2018

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Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more

WilmerHale

Federal Circuit Patent Updates - August 2018

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Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more

Knobbe Martens

Federal Circuit Review - July 2018

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Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

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