News & Analysis as of

Prior Art Article III

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed....

Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...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

McDermott Will & Emery

Check Your Expert Skills and Standing

The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision...more

McDermott Will & Emery

Shots Fired: Challenger Must Have Requisite Standing Before Appealing Unfavorable IPR Decisions

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The US Court of Appeals for the Federal Circuit found, in the context of an appeal from an inter partes review (IPR) decision, that the appellant had Article III standing and affirmed a Patent Trial & Appeal Board (Board)...more

Knobbe Martens

Federal Circuit Review - February 2021

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Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation - In M & K Holdings, Inc. v. Samsung Electronics Co.,Ltd., Appeal No. 20-1160, the Federal Circuit...more

McDermott Will & Emery

“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established

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Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Regents of the Univ. of Minn. v. LSI Corp., 926 F.3d 1327...

LSI and Ericsson petitioned for inter partes review (IPR) of several patents owned by the University of Minnesota (UMN). UMN moved to dismiss each IPR based on state sovereign immunity. The Patent Trial and Appeal Board...more

McDermott Will & Emery

AIA Survives Constitutional Challenge to Applicability to Pre-AIA Filings

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision finding that the America Invents Act (AIA) is constitutionally sound as applied to patents issuing on applications filed...more

Goodwin

Issue Eighteen: PTAB Trial Tracker

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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

Jones Day

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

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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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019 #3

PATENT CASE OF THE WEEK - General Electric Co. v. United Techs. Corp., Appeal No. 2017-2497 (Fed. Cir. July 10, 2019) - The Case of the Week focuses on standing to bring an appeal of an adverse decision by the PTAB in...more

Hogan Lovells

U.S. + Germany Patent Update – July 2019

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Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. United States - - U.S. Congress Introduces Bill Addressing Patent Subject Matter Eligibility -...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

Akin Gump Strauss Hauer & Feld LLP

A Claimed Parameter Range That Overlaps with Ranges in the Prior Art Creates a Burden-Shifting and Rebuttable Presumption of...

The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more

Jones Day

Clarified: Standing Requirements and Burden Shifting Framework in IPR Proceedings

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Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit....more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Dismisses IPR Petitioner’s Appeal of Final Written Decision for Lack of Standing

Earlier this month, the Federal Circuit dismissed for lack of standing an appeal filed by an inter partes review (IPR) petitioner of a final written decision issued by the Patent Trial and Appeal Board (PTAB) that held two...more

Knobbe Martens

Federal Circuit Review - September 2017

Knobbe Martens on

IPR Appellants Must Satisfy Article III Standing - In Personal Audio, LLC v. Electronic Frontier Foundation, Appeal No. 2016-1123, the Federal Circuit held that standing for an appeal to a federal court is based on the...more

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