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Potential Claim Construction Error Is Harmless When Not Relied Upon by the Board

BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC - Before Prost, Reyna, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: A party challenging the Board’s decision by alleging claim construction...more

Ensuring a Reference Is Analogous Art to a Challenged Patent, Not to Another Reference

SANOFI-AVENTIS DEUTSCHLAND GMBH V. MYLAN PHARMACEUTICALS INC. Before Reyna, Mayer, and Cunningham. Appeal from Patent Trial and Appeal Board....more

Description Prescription

REGENTS OF THE UNIVERSITY OF MINNESOTA V. GILEAD SCIENCES, INC. Before Lourie, Dyk, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: For drug patents, adequate written description of a broad genus...more

Once You’re In, You’re In, Amending Claims Addressing an Instituted Ground Allows for More Unrelated Amendments

AMERICAN NATIONAL v. SLEEP NUMBER CORPORATION [OPINION]- PRECEDENTIAL - Before Stoll, Schall, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019-00497...more

Avoiding § 101 Eligibility Issues in Internet-Centric Method Claims

WEISNER v. GOOGLE LLC - Before Stoll, Reyna, and Hughes, Appeal from the United States District Court for the Southern District of New York. Summary: The specific implementation of an abstract idea, such as improving...more

The Applicant-Action (Or Inaction) Exception

GILBERT P. HYATT v. UNITED STATES PATENT AND TRADEMARK OFFICE - Before Moore, Prost, and Hughes. Appeal from the District Court for the Eastern District of Virginia - Summary: For a patent application filed but not yet...more

IPR estoppel “under an unusual set of facts”

Before Stoll, Schall, and Cunningham. Appeal from the United States District Court for the Western District of Texas....more

INVENTORS, NOT AI-VENTORS: The Patent Act Requires an “Inventor” to Be a Natural Person

Before Moore, Taranto, and Stark. Appeal from the United States District Court for the Eastern District of Virginia. Summary: Under the Patent Act , an “inventor” must be a natural person. Therefore, an AI system cannot...more

Claims With Clerical Errors Can Be Judicially Corrected and Willfully Infringed

PAVO SOLUTIONS LLC v. KINGSTON TECHNOLOGY COMPANY, INC. Before: Lourie, Prost, and Chen.  Appeal from the United States District Court for the Central District of California. Summary: A court can correct obvious minor...more

Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious

HOYT AUGUSTUS FLEMING V. CIRRUS DESIGN CORPORATION - Before Lourie, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A claim is obvious where “the proposed combination of [the...more

Claim Element With No Antecedent Basis May Be Broader Than the Same Element With an Antecedent Basis

EVOLUSION CONCEPTS, INC. v. HOC EVENTS, INC. Before Prost, Taranto, and Chen.  Appeal from the United States District Court for the Central District of California. Summary:  Claim that requires the removal of a...more

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

The Location of Witnesses and Relevant Evidence Still Reigns Supreme in Venue Decisions

In Re: Juniper Networks, Inc. Before Lourie, Bryson, and Taranto. Per Curiam. On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas. Summary: A party’s relatively...more

The Obviousness of Preamble Limitations Can Be a Real Headache for Patent Challengers

ELI LILLY AND COMPANY v. TEVA PHARMACEUTICALS  - Before Lourie, Bryson and O’Malley.  Appeal from the Patent Trial and Appeal Board. Summary: In claims for methods of using apparatuses or compositions, statements of...more

Presumption of Nexus Between Claims and Commercial Products May Not Apply When Unclaimed Features Are Critical

TEVA PHARMACEUTICALS v. ELI LILLY AND COMPANY - Before LOURIE, BRYSON, and O’MALLEY. Appeal from the Patent Trial and Appeal Board. Summary: The presumption of nexus analysis requires the fact finder to consider the...more

Assignors Can Challenge Validity so Long as They Do Not Contradict Assignment Representations

MINERVA SURGICAL, INC. v. HOLOGIC, INC., et al. - Supreme Court of the United States.  Opinion of the Court written by Justice Kagan.  Justice Alito filed a dissenting opinion.  Justice Barrett filed a dissenting opinion,...more

Choose Your Words Carefully: Inventors Are Masters of Their Claims, and the Words They Use to Describe and Claim Their Invention...

BIO-RAD LABORATORIES, INC. v. ITC - Before Newman, Lourie, and Dyk. Appeal from the ITC. Summary: Patentees cannot escape the bounds of their claims by promoting oversimplified characterizations of those claims....more

Obviousness in View of Canceled Claims

BECTON, DICKINSON AND COMPANY v. BAXTER CORPORATION ENGLEWOOD - Before Prost, Clevenger, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: A patent that has issued and subsequently been canceled may be...more

Hurdles in the Admissibility of Source Code and Expert Reliance on Unauthenticated Source Code

WI-LAN INC. v. SHARP ELECTRONICS CORPORATION - Before Dyk, Taranto, and Stoll. Appeal from the United States District Court for the District of Delaware. Summary: Source code evidence found to be inadmissible hearsay...more

Claim Construction Arguments Not Made to the PTAB Are Forfeited on Appeal

IN RE: GOOGLE TECHNOLOGY HOLDINGS LLC - Before Taranto, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Claim construction arguments are forfeited if not raised before the PTAB. The PTAB...more

Applying the Broadest Reasonable Interpretation of the Claim in Light of the Specification, Federal Circuit Revives Claims in...

ST. JUDE MEDICAL, LLC v. SNYDERS HEART VALVE LLC - Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The broadest reasonable interpretation of a claim must be considered in...more

Patterns of Vexatious Litigation Are a Relevant Consideration in Awarding Attorney's Fees in Patent Infringement Cases

ELECTRONIC COMMUNICATION TECHNOLOGIES, LLC V. SHOPPERSCHOICE.COM, LLC - Before PROST, DYK, and WALLACH. Appeal from the United States District Court for the Southern District of Florida. Summary: The grant or denial of...more

Federal Circuit Clarifies Not All § 112 ¶ 6 Indefiniteness Prevents Prior Art Invalidity Analysis by PTAB

COCHLEAR BONE ANCHORED SOLUTIONS AB V. OTICON MED. AB - Before Taranto, O’Malley, and Newman. Appeal from the Patent Trial and Appeal Board. Summary: Anticipation and obviousness analysis by the PTAB is not impossible...more

Assignor Estoppel Does Not Preclude Reliance on Invalidity Decision

HOLOGIC, INC. v. MINERVA SURGICAL, INC. Before Wallach, Clevenger, and Stoll. Appeals from the United States District Court District of Delaware. Summary: The doctrine of assignor estoppel precludes an assignor from...more

Enjoining Speech and the Right to Allege Patent Infringement

MYCO INDUSTRIES, INC. v. BLEPHEX, LLC - Before Newman, O’Malley, and Taranto. Appeal from the U.S. District Court for the Eastern District of Michigan - Summary: Enjoining a patentee from making statements about...more

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