The US Court of Appeals for the Federal Circuit affirmed an obviousness decision by the Patent Trial & Appeal Board, explaining that nothing requires a petitioner to identify a prior art reference as a “primary reference” in...more
American National Manufacturing Inc. v. Sleep Number Corporation, Appeal Nos. 2021-1321, -1323, -1379, -1382 (Fed. Cir. Nov. 14, 2022) - In an appeal from inter partes review proceedings before the Patent Trial and Appeal...more
In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
In Trustees of Columbia University v. Illumina, Inc., the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeals Board (“PTAB” or “Board”) decision to invalidate five patents owned by Columbia,...more
Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more
The Federal Circuit recently applied well-established principles of obviousness in affirming the Patent Trial and Appeals Board's invalidation of several patents related to antifungal formulations in Anacor Pharmaceuticals,...more
As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more
PATENT CASE OF THE WEEK - American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. July 31, 2020) - In this week’s Case of the Week, the Federal Circuit modified and re-issued its...more
Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more
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
GAME AND TECH. CO., LTD. v. WARGAMING GROUP LTD. Before Dyk, Plager, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Board, applying Fed. R. Civ. P. 4, must independently determine whether...more
A panel of the Federal Circuit recently sounded off with something less than the usual deferential tone regarding review under the substantial evidence standard of factual findings on patentability made by the Patent Trial...more
Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more
Assertions of obviousness based on prior art references in combination with “routine optimization” by one skilled in the art are common in the chemical and biological fields. The Federal Circuit recently addressed this issue...more
Federal Circuit Summary - On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no...more
Federal Circuit Summary - Before O’Malley, Mayer, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Claims may be rejected under 35 § U.S.C. 103 based on implicit disclosures of a prior art reference....more
The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more
Federal Circuit Summaries - Before Lourie, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in...more
Addressing patentability, the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB’s) rejection of claims as being anticipated, and vacated and remanded the obviousness determination,...more
In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more
Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more
Federal Circuit Summaries - Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a...more
Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more
In Mylan v. Aurobindo the Circuit affirms the grant of a preliminary injunction based upon the infringement of one of the three patents in suit. However, the panel reverses the injunction as to the other two patents based on...more