News & Analysis as of

Reversal Obviousness Appeals

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2025

Honeywell International Inc. v. 3G Licensing, S.A., Appeal Nos. 2023-1354, -1384, -1407 (Fed. Cir. Jan. 2, 2025) In this week’s Case of the Week, the Federal Circuit reversed an inter partes review finding of the Patent...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Allergan Limits Cellect, But Leaves Ambiguity in ODP Analysis

On August 13, the Federal Circuit, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., held that a “first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring...more

White & Case LLP

Federal Circuit Limits the Application of Obviousness-Type Double Patenting for Patents in the Same Family

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On August 13, 2024, a three-judge panel of the Court of Appeals for the Federal Circuit issued a decision, authored by Judge Lourie, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061, which limits the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2024 #2

Pfizer Inc. v. Sanofi Pasteur Inc., Appeal Nos. 2019-1871, -1873, -1875, -1876, -2224 (Fed. Cir. Mar. 5, 2024) This week’s Case of the Week mostly resolves an appeal filed five years ago, following decisions from the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023 #3

Sequoia Technology, LLC v. Dell, Inc., Appeal Nos. 2021-2263, -2264, -2265, -2266 (Fed. Cir. April 12, 2023) In an appeal from a stipulated judgment of noninfringement and invalidity following an adverse claim construction...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

McDermott Will & Emery

Construing the Construction: Federal Circuit Chips Away at IPR Win

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Addressing claim construction issues in inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed an obviousness finding as to some claims...more

McDermott Will & Emery

Claim at Issue Must Be Substantively Allowable to Qualify for PTA

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The US Court of Appeals for the Federal Circuit affirmed two district court decisions, finding that a patent owner who only partially prevailed in one of two appeals was not entitled to any additional patent term adjustments...more

Goodwin

Federal Circuit Reverses PTAB Decision in Amgen Biosimilar-Related IPR Appeal

Goodwin on

On April 14, 2022, the U.S. Court of Appeals for the Federal Circuit reversed the PTAB’s determination in IPR2016-01542 that claims of Amgen’s U.S. Patent No. 8,952,138 are obvious. The ’138 patent claims are directed to...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2021 #2

Raytheon Techs. Corp. v. General Elec. Co., Appeal No. 2020-1755 (Fed. Cir. Apr. 16, 2021) - In its only precedential patent decision this week, the Federal Circuit issued an important ruling about the issue of enablement...more

McDonnell Boehnen Hulbert & Berghoff LLP

Adidas AG v. Nike, Inc. (Fed. Cir. 2020)

Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more

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

PTAB Strategies and Insights - April 2019: The Federal Circuit Clarifies The Notice Requirements Of The Administrative Procedure...

In Nike, Inc. v. Adidas AG, No. 19-1262 (Fed. Cir. Apr. 9, 2020), the Federal Circuit offered important guidance to Patent Trial and Appeal Board (PTAB) litigants regarding how the notice requirements of the Administrative...more

McDonnell Boehnen Hulbert & Berghoff LLP

Nike, Inc. v. Adidas AG (Fed. Cir. 2020)

The procedural niceties of the U.S. Patent and Trademark Office's implementation of the post-grant review features of the Leahy-Smith America Invents Act continue to be explicated in the Federal Circuit (and of course, the...more

McDonnell Boehnen Hulbert & Berghoff LLP

BASF Corp. v. SNF Holding Co. (Fed. Cir. 2020)

In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more

McDonnell Boehnen Hulbert & Berghoff LLP

Boehringer Ingelheim Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2020)

Last month, in Boehringer Ingelheim Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc., the Federal Circuit reversed a decision by the U.S. District Court for the District of New Jersey finding certain claims of U.S. Patent...more

McDermott Will & Emery

Stated Purpose More Decisive than Definition in Construing Claims

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The US Court of Appeals for the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding the decision was infected by an erroneous claim construction that failed to consider the purpose of...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Confirms That Specific Treatments Are Not Abstract Ideas—But They Still Might Be Obvious

The Federal Circuit recently held certain method of treatment claims patent eligible under step one of Alice, reversing a district court’s judgment on the pleadings. In that same case, the Federal Circuit upheld the district...more

Knobbe Martens

Non-Expert Testimony on Obviousness Is Inadmissible

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HVLPO2, LLC v. OXYGEN FROG, LLC - Before Newman, Moore, and Chen. Appeal from the United States District Court for the Northern District of Florida. Summary: It is an abuse of discretion to permit a witness to testify...more

Mintz - Intellectual Property Viewpoints

Fox Factory v. SRAM – According to CAFC, No Presumption of Nexus for Bicycle Chainring Patents; IPR Decision Reversed and Remanded

On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”)...more

Knobbe Martens

Federal Circuit Review - November 2019

Knobbe Martens on

The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

McDermott Will & Emery

Unsupported Expert Testimony Isn’t Enough to Establish Motivation to Combine

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The US Court of Appeals for the Federal Circuit determined that a Patent Trial and Appeal Board (PTAB) finding regarding motivation to combine based only on conclusory expert testimony was not supported by substantial...more

McDermott Will & Emery

Federal Circuit Snuffs Out PTAB Analogous Art Reasoning

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The US Court of Appeals for the Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB), holding certain claims to be not obvious where the PTAB failed to consider record evidence that...more

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

PTAB Strategies and Insights - November 2019: The Board's Reliance on Expert's Conclusory Statements May Not Meet Substantial...

In a recent precedential decision, TQ Delta, LLC v. Cisco Systems, Inc., the Federal Circuit reversed a pair of USPTO inter partes review proceedings that invalidated all claims of two related U.S. patents because “the...more

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