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Commissioner’s Exercise of Vacant Director’s Duties Does Not Violate Appointments Clause

ARTHREX, INC. v. SMITH & NEPHEW, INC. Before Moore, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board. Summary: During vacancies of Director and Deputy Director of the U.S. Patent and Trademark Office,...more

Notice Letters and Communications May Form a Basis for Personal Jurisdiction

APPLE INC. v. ZIPIT WIRELESS, INC. [OPINION]- PRECEDENTIAL - Before Hughes, Mayer and Stoll.  Appeal from the United States District Court for the Northern District of California. Summary: Notice letters and related...more

PTAB Should Analyze Patentability Even if Claims Are Indefinite

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Indefinite claims do not preclude patentability analysis at the PTAB....more

A Generic Motivation Is Still a Motivation

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A “generic” motivation to combine that has broad appeal or applicability is not...more

Stanford’s Computer Models – Inventive for Parents, but Not for Patents

IN RE: BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY - Before Prost, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: The specific combination of purely mathematical steps in a...more

If You Buy the Whole Company, You Can Fight Its Legal Battles

MOJAVE DESERT HOLDINGS, LLC v. CROCS, INC. Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: The purchaser or assignee of all assets and interests of the requester of inter...more

Non-Infringement Need Not Be “Actually Litigated” to Shield Accused Products From Infringement Liability in Subsequent Actions

In Re Personal Web Technologies LLC - Before Wallach, Bryson, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: The Kessler doctrine is not limited to cases...more

The Disclosure-Dedication Doctrine Applies Even When Disclosure Relates to a Different, Unclaimed Embodiment

EAGLE PHARMACEUTICALS INC. V. SLAYBACK PHARMA LLC. Before O’Malley, Reyna, and Chen. Appeal from the United States District Court for the District of Delaware. Summary: The disclosure-dedication doctrine precludes...more

Competing Evidence Regarding Whether Reference Qualifies as Primary Reference Precludes Summary Judgment of Obviousness of a...

SPIGEN KOREA CO., LTD. v. ULTRAPROOF, INC. Before Newman, Lourie, and Reyna. Appeal from the Central District of California. Summary: Summary judgment of obviousness is improper for a design patent if there is a genuine...more

Using the Intrinsic Record to Resolve Alice Step One

CARDIONET, LLC v. INFOBIONIC, INC - Before Dyk, Plager, and Stoll. Dyk dissenting in part. Appeal from the District of Massachusetts. Summary: Alice step one is a threshold inquiry that can be resolved by analyzing the...more

Claims Using Naturally-Occurring Phenomenon in Method of Preparation Found Patent Eligible

ILLUMINA, INC. v. ARIOSA DIAGNOSTICS, INC. Before Lourie, Moore, and Reyna. Appeal from the Northern District of California. Summary: Use of a natural phenomenon in a method of preparation claim found patent eligible...more

Expert Testimony Must Be Tethered to Supporting Evidence

Before Reyna, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board. TQ DELTA, LLC v. CISCO SYSTEMS, INC. Summary: Findings of fact at the PTAB must be supported by substantial evidence, and conclusory expert...more

Evidence from Non-Instituted Grounds Not Permitted in Final Written Decision at PTAB

IN RE: IPR LICENSING, INC., - Before O’Malley, Newman, and Taranto.  Appeal from the Patent Trial and Appeal Board. Summary: Establishing a motivation to combine two references for an obviousness determination in an IPR...more

Prosecution History Estoppel Bars Infringement Claim Under Doctrine of Equivalents

PHARMA TECH SOLUTIONS, INC. v. LIFESCAN, INC. Before Moore, Reyna, and Stoll. Appeal from the United States District Court for the District of Nevada. Summary: Claims for infringement under the doctrine of equivalents...more

Sublicense May Survive Termination of a Main License

FRAUNHOFER-GESELLSCHAFT v. SIRIUS XM RADIO INC. Before Dyk, Linn, and Taranto.  Appeal from the District of Delaware. Summary:  Contract interpretation must be applied in determining whether a sublicense survives...more

Missing Component Does Not Preclude a Prior Art Reference from Being a Primary Reference in a Design Case

CAMPBELL SOUP COMPANY v. GAMON PLUS, INC. Before Prost, Newman and Moore. Appeal from the Patent Trial and Appeal Board. Summary: A proper primary reference can have slight differences in design if, in light of overall...more

Terms of Degree with Objective Boundaries Are Not Indefinite

GUANGDONG ALISON HI-TECH CO. V. ITC - Before Wallach, Hughes, and Stoll. Appeal from United States International Trade Commission. Summary: A term of degree is not indefinite so long as the written description provides...more

Absent Exceptional Circumstances, a Party Cannot Raise New Issues on Appeal

HYLETE LLC v. HYBRID ATHLETICS, LLC - Before Moore, Reyna, and Wallach. Appeal from the Trademark Trial and Appeal Board. Summary: Absent exceptional circumstances, an argument raised for the first time on appeal is...more

State Sovereign Immunity Does Not Bar an IPR

REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION - Before Dyk, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: State sovereign immunity does not apply to IPR proceedings asserted against...more

Finding No Unambiguous Definition in Record, Federal Circuit Applies Plain Meaning to Disputed PTAB Construction

BRADIUM TECHNOLOGIES LLC V. ANDREI IANCU - Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A clear and unambiguous definition of a claim term is required to redefine the term to...more

Lead Compound Analysis Improper When Evaluating a Method of Use of a Compound

NOVARTIS PHAMACEUTICALS CORP V. WEST-WARD PHARMACEUTICALS - Before Stoll, Plager, and Clevenger. Appeal from the United States District Court for the District of Delaware. Summary: When a method of using a prior art...more

Federal Circuit Appeal Dismissed Where Party Appealing PTAB Decision Lacked Article III Standing

AVX CORPORATION V. PRESIDIO COMPONENTS, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent and Trial Appeal Board. Summary: Appellants from an IPR decision to the Federal Circuit must have concrete claims...more

ATI Technologies ULC v. Iancu

Before Newman, O’Malley, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Diligence requires “reasonably continuous diligence” and is not negated if the inventor works on improvements and evaluates...more

Forest Laboratories, LLC v. Sigmapharm Laboratories

Federal Circuit Summary - Before Prost, Dyk, and Moore. Appeal from District of Delaware. Summary: A district court’s construction of a claim term that is contrary to the plain language of the claims and usage of the...more

Athena Diagnostics, Inc. v. Mayo Collaborative Services

Federal Circuit Summaries - Before Judge Newman, Lourie and Stoll. Appeal from the United States District Court for the District of Massachusetts. Summary: Claims reciting only conventional steps to detect a natural...more

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