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Prior Art Obviousness Intellectual Property Litigation

BakerHostetler

[Podcast] A New Test: Landmark Decision Overrules Framework for Design Patent Obviousness

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The legal landscape quaked, and clients and counsel continue to navigate the tremors. More than 40 years of precedent was upended in May 2024 when a federal circuit court struck down the Rosen-Durling test for assessing...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

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

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Recentive Analytics, Inc. v. Fox Corp., et al., No. 2023-2437 (Fed. Cir. (D. Del.) Apr. 18, 2025). Opinion by Dyk, joined by Prost and Goldberg (sitting by designation). Recentive sued Fox for infringing four patents that...more

McDermott Will & Emery

Transatlantic Terminology: Skilled Artisan Could Equate UK, US Word Meanings

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination, finding that a skilled artisan would have found the term “sterile” in a UK publication to mean the same as...more

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

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SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sage Products, LLC v. Stewart (Fed. Cir. 2025)

When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton...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

Rothwell, Figg, Ernst & Manbeck, P.C.

Product-by-Process Analysis: Invalidity ≠ Infringement

On March 4, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision in Restem, LLC v. Jadi Cell, LLC, No. 23-2054, 2025 WL 679195, at *1 (Fed. Cir. Mar. 4, 2025), finding that the patent...more

Knobbe Martens

An Obvious Solution to an Unknown Problem?

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IMMUNOGEN, INC. v. STEWART - Before Lourie, Dyk, and Prost. Appeal from the United States District Court for the Eastern District of Virginia. A solution to a problem can be obvious even when the problem itself was unknown in...more

Knobbe Martens

The Board Must Provide Reasoned Explanation When Discarding Material, Unrebutted Evidence

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CQV CO., LTD. v. MERCK PATENT GMBH - Before Cunningham, Chen, and Mayer. Appeal from the Patent Trial and Appeal Board. The Board erred by failing to explain why it discarded material and unrebutted evidence that a reference...more

Womble Bond Dickinson

Design Patent Obviousness

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The landscape of design patent law has recently evolved with the introduction of a new standard for determining obviousness. For decades, the Rosen-Durling test was used to assess obviousness of design patents....more

Jones Day

Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

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Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Immunogen, Inc. v. Stewart (Fed. Cir. 2025)

After creating something of a frisson due to the apprehension that the Federal Circuit might be convinced to re-evaluate whether it was a necessary element for establishing obviousness for the skilled artisan to have had a...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation

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This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Provides Further Clarity on Issues Surrounding Patent Validity in Novartis Pharmaceuticals Corp. v....

In this edition of The Precedent, we outline the validity of a pharmaceutical patent concerning the patent’s written description. Following an appeal from the United States District Court for the District of Delaware, the...more

Alston & Bird

Intellectual Property Litigation Newsletter | February 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that the Federal Circuit always says never, patent publications...more

Smart & Biggar

Avoiding the hindsight trap in the context of a patent obviousness analysis

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While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....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

McDermott Will & Emery

It’s Obvious: Erroneous Claim Construction Can Be Harmless

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination even though it found the Board had improperly construed a claim term, because the Court found the error harmless...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025 #3

Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025) In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s...more

Akin Gump Strauss Hauer & Feld LLP

Voluminous Expert Testimony and Exhibits Insufficient on Their Own to Warrant Denial of IPR Institution

The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more

McDonnell Boehnen Hulbert & Berghoff LLP

Lynk Labs, Inc. v. Samsung Electronics Co. (Fed. Cir. 2025)

Published Patent Applications Are Prior Art as of the Filing Date, Not the Publication Date - Lynk Labs raises a simple question of statutory interpretation with surprisingly important ramifications:  in inter partes review,...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Federal Circuit Reverses PTAB’s holding of Non-Obviousness of Standard Adopted 3G Technology

The recent decision by the Federal Circuit in Honeywell International Inc. v. 3G Licensing, S.A., issued on January 2, 2025, overturned the Patent Trial and Appeal Board’s (“the Board”) factual and legal holdings in the final...more

Alston & Bird

Patent Case Summaries | Week Ending January 3, 2025

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Honeywell International Inc., et al. v. 3G Licensing, S.A., Nos. 2023-1354, -1384, -1407 (Fed. Cir. (PTAB) Jan. 2, 2025). Opinion by Dyk, joined by Chen. Dissenting opinion by Stoll....more

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