Federal Circuit Vacates District Court’s Claim Construction of the Term...
In Malvern Panalytical Inc. v. TA Instruments-Waters LLC, the Federal Circuit addressed the proper construction of the claim term “pipette guiding mechanism.” Specifically, the Federal Circuit found...
View ArticlePTAB’s Decision of a Singular-Only Construction of the Term “The Sample...
In ABS Global, Inc., Genus plc v. Cytonome/ST, LLC, the case addresses a claim construction issue regarding whether a claim term is plural-allowing. Background ABS Global Inc. and Genus plc...
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Federal Circuit Weighs in on Relevance of Primary Reference’s Intended...
In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Innovations S.A.R.L., the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary...
View ArticleFederal Circuit Affirms PTAB’s Ruling of Swearing Behind a Prior Art Reference
In Medtronic, Inc., Medtronic Vascular, Inc. v. Teleflex Innovations S.A.R.L., the case addresses whether the final written decisions in a consolidated inter partes appeal (“IPR”) correctly found that...
View ArticlePetitioner Failed to Establish Standing in IPR Appeal
Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC addresses whether an IPR petitioner can assert Article III standing on appeal based on potential infringement liability and potential...
View ArticleAxonics v. Medtronic
The Federal Circuit vacated and remanded two Patent Trial and Appeal Board (“PTAB”) decisions because the PTAB erred in its obviousness analysis and found that Axonics failed to show a motivation to...
View ArticleFederal Circuit Vacates Invalidity Judgement Based on Collateral Estoppel...
In Finjan LLC, FKA Finjan, Inc. v. SonicWall, Inc., No. 2022-1048 (Fed. Cir. Oct. 13, 2023), the Federal Circuit vacated a summary judgement of invalidity based on collateral estoppel, where the case...
View ArticleFederal Circuit Clarifies Standards to Establish Nexus Between Objective...
In this case, the Federal Circuit determined the sufficiency of evidence to rebut a nexus between objective evidence and non-obviousness; and to establish the objective indicia of copying. Background...
View ArticlePTAB’s Authority to Issue a Final Written Decision After a Statutory Deadline
In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023), the case addresses the Patent Trial and Appeal Board’s (“PTAB’s”) authority to issue a Final Written...
View ArticleAnticipation and Obviousness in Patent Law: An Analysis of Recent IPR Decisions
In Incept v. Palette Life Sciences 21-2063, 21-2065 (Fed. Cir. Aug. 16, 2023), the case addresses the Board’s anticipation and obviousness determinations in two IPRs (IPR2020-00002 and IPR2020-00004),...
View Article“Comparison Prior Art” Must Be Tied to the Same Article of Manufacture as...
In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. 2021-2299, 2021-2338 (Fed. Cir. Sept. 15, 2023), the Federal Circuit vacated a jury verdict of non-infringement in a...
View ArticlePharmaceutical Companies Have Rights if the Federal Government Seized their...
The Biden administration recently determined that it has the right to seize patents covering certain high-priced medicines, in an apparent effort to take a more aggressive approach to lowering drug...
View ArticleThe Intertwining Nature of Motivation to Combine and Reasonable Expectation...
In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation...
View ArticleFederal Circuit Affirms Skinny Label Carve Outs
In H. Lundbeck A/S, et al. v. Lupin Ltd., et al., Nos. 2022-1194, 2022-1208, and 2022-1246 (December 7, 2023), the Federal Circuit held that generic pharmaceutical companies may continue to use skinny...
View ArticleThe Importance of Reasonable Particularity in a Doctrine of Equivalents Argument
In VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. 2023), VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759...
View ArticleIdentifying Protocols by Name May Disclose Sufficient Structure for...
In Sisvel International S.A. v. Sierra Wireless, Inc. et al., Nos. 22-1493, 22-1547 (Fed. Cir. 2023), Sierra Wireless challenged claims 1-10 of Sisvel’s U.S. Patent No. 6,529,561 (“the ’561 patent”)...
View ArticleIs 2024 the Year When We Will Finally Know the Scope of IPR Estoppel?
This article was originally posted to Law360. The America Invents Act created inter partes review in 2012. Statutory estoppel is one of the features of the statute that balances the interests of...
View ArticleFederal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a...
In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an...
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Federal Circuit Rules on Written Description Requirement and Prior Art...
RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a...
View ArticleAI-Assisted Inventions: Are They Patentable? Who is the Inventor?
Generative artificial intelligence (AI) may change how we invent: many envision a collaborative approach between human inventors and AI systems that develop novel solutions to problems together. Such...
View ArticleFederal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper...
ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language...
View ArticleAI-Assisted Inventions: Is There a Duty to Disclose the Use of AI?
Inventors and patent practitioners filing patent applications before U.S. Patent and Trademark Office (USPTO) may have an obligation to disclose if artificial intelligence (AI) is used in the...
View ArticleFederal Circuit Rules on when the Patent Trial and Appeal Board is Engaging...
EcoFactor, Inc. is the holder of U.S. Patent No. 8,498,753, titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” which focuses on optimizing climate control systems,...
View ArticleFederal Circuit Concluded that Operating Manuals Subject to Confidentiality...
In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating...
View ArticleFederal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s...
In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from...
View ArticleThe USPTO and USCO Delivered a Report to Congress on IP Issues with NFTs –...
The United States Patent and Trademark Office (“USPTO”) and the United States Copyright Office (“USCO”) delivered a report to Congress entitled Non-Fungible Tokens and Intellectual Property on March...
View ArticleFederal Circuit Reverses District Court’s Holding of Prosecution Disclaimer...
In K-Fee System GMBH, v. Nespresso USA, Inc. No. 2022-2042 (Fed. Cir. December 26, 2023) (“Opinion”), the case addresses how the construction of terms in claim limitations is critical in analyzing...
View Article2023 Federal Circuit Case Summaries
We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the...
View ArticleUSPTO Issues Additional Guidance on Use of AI Tools in Connection with USPTO...
The USPTO issued guidance on February 6, 2024 that clarified existing rules and policies and discussed how to apply them when AI is used in the drafting of submissions to the Patent Trial and Appeal...
View ArticleDivided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark...
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