News & Analysis as of

Printed Publications Appeals

Jones Day

Federal Circuit Slices PTAB’s Printed Publication Finding

Jones Day on

Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to...more

McDermott Will & Emery

Sliced and Diced: Operating Manuals Are Printed Publications

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more

McDermott Will & Emery

IPR Petition Cannot Be Based on Applicant Admitted Prior Art

McDermott Will & Emery on

Addressing the type of prior art that may form the basis of an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit vacated an unpatentability finding based on “applicant admitted prior art”...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Akin Gump Strauss Hauer & Feld LLP

Patent Owner’s Unpatentability Concession in IPR Insufficient to Trigger Estoppel of System Prior Art in District Court

The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more

McDermott Will & Emery

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you...more

Goodwin

Issue Twenty-Six: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Sunstein LLP

Fresh is Best and Stale Will Fail: The PTAB Explains Its Logic in Refusing to Institute an IPR

Sunstein LLP on

The Patent Act allows anyone to try to initiate an inter partes review (IPR), which is a proceeding before the Patent Trial and Appeal Board (PTAB) challenging one or more claims of a patent. Any such challenge may be based...more

Knobbe Martens

Publication Shelved in Publicly Accessible Library Was Accessible to the Public and Therefore Available as Prior Art

Knobbe Martens on

TELEFONAKTIEBOLAGET LM ERICSSON v. TCL CORPORATION - Before NEWMAN, LOURIE, and CLEVENGER. Appeal from the Patent Trial and Appeal Board. Summary:  Publications shelved in publicly accessible libraries may be publicly...more

Akin Gump Strauss Hauer & Feld LLP

No Estoppel in District Court on Prior Art that Differs Substantively—and in a Manner Germane to Invalidity—from that Asserted in...

A Central District of California judge has clarified his prior ruling on summary judgment that estoppel under 35 U.S.C. § 315(e)(2) that applies to certain obviousness invalidity grounds raised by Defendants. In the prior...more

Jones Day

Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

Jones Day on

Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding video data. The...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Medtronic, Inc. v. Barry, 891 F.3D 1368...

Although the Federal Circuit has analyzed the qualifications of prior art printed publications since its inception, the precise standards for public accessibility have become dramatically more important under PTAB...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

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

PTAB Strategies and Insights - February 2019: With The Right Language, Federal Circuit Finds Alternative Invalidity Theories Ok...

In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more

White & Case LLP

Supreme Court Says America Invents Act Did Not Alter On-Sale Bar

White & Case LLP on

Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more

McDermott Will & Emery

Collaterally Estopped, Do Not Pass Go

In one of the latest decisions in the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit reiterated that Rule 36 affirmance can create collateral estoppel. VirnetX Inc. v. Apple, Inc., Case Nos. 17-2490,...more

McAfee & Taft

Gavel to Gavel: Supreme Court provides clarity

McAfee & Taft on

Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more

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

PTAB Strategies and Insights - December 2018: Precedential Opinion Says Rule 36 Creates Collateral Estoppel Despite Its Ambiguous...

Rule 36 is a single sentence affirmance. Yet to explain the impact of a Rule 36 decision on later filed cases, the Court needed to issue a 7-page precedential decision. In Virnetx v Apple the Court held Rule 36 creates...more

Knobbe Martens

In Re: Marco Guldenaar Holdings B.V.

Knobbe Martens on

Federal Circuit Summaries - Before Chen, Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent...more

Jones Day

Rule 36 Judgment May Support Finding of Collateral Estoppel

Jones Day on

The Federal Circuit recently affirmed final written decisions in two inter partes reviews by holding that the patent owner was collaterally estopped from relitigating the threshold issue of whether a prior art reference was a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #3

PATENT CASE OF THE WEEK - VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) The Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (“PTAB”), which...more

Knobbe Martens

Virnetx Inc., v. Apple, Inc.

Knobbe Martens on

Federal Circuit Summary - Before Newman, O’Malley, and Chen. Appeal from the PTAB. Summary: Patent Owner Vertnetx Inc. (“Virnetx”) was collaterally estopped from arguing that a reference was not a printed publication...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Standard for Public Accessibility of Printed Publications; Offers Claim Drafting Tips

The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

36 Results
 / 
View per page
Page: of 2

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide