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When Is Batting “Lofty”? Look to the Specification

In an opinion addressing the definiteness of a term of degree, the US Court of Appeals for the Federal Circuit affirmed a final determination of the US International Trade Commission (ITC), concluding that an asserted claim...more

Fractured Federal Circuit Maintains Ineligibility of Diagnostic Methods

In an opinion evidencing the split in opinion regarding the patent eligibility of diagnostic methods, the US Court of Appeals for the Federal Circuit denied a petition for panel rehearing or rehearing en banc, leaving in...more

Intended Use Preamble Not Limiting; Diligence Must Only Be Reasonably Continuous

In an opinion addressing claim construction and priority dates, the US Court of Appeals for the Federal Circuit explained that preamble language is not limiting when it merely recites an intended use, and that diligence need...more

Same Claim, Different Petitioner: Second IPR Permitted During Pendency of First

Addressing discretionary denial of institution of a new inter partes review (IPR) petition where the challenged claim is already the subject of an instituted IPR proceeding, the Patent Trial and Appeal Board (PTAB) decided...more

Diagnostic Method Found Ineligible, Again

In a post-Mayo v. Prometheus opinion addressing the subject matter eligibility of diagnostic methods based on underlying natural laws, the US Court of Appeals for the Federal Circuit affirmed the district court’s conclusion...more

Craps! Dice Markings Don’t Pass Muster for Patent Eligibility

In an opinion addressing patent-eligible subject matter and the printed matter doctrine, the US Court of Appeals for the Federal Circuit concluded that a particularly marked die set did not save the claims from patent...more

Final Written Decision Estops Petitioner from Challenging Claims on Different Grounds

In an opinion addressing the scope of estoppel accruing to a petitioner following the issuance of a final written decision in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) concluded that such a...more

Consistent Witness Testimony Gives Teeth to Assertion of Public Availability

In an opinion addressing the sufficiency of corroborating evidence regarding public availability of a catalog, the US Court of Appeals for the Federal Circuit concluded that prior art status was established based on...more

Specification Must Enable Full Scope of Claims as Construed

In an opinion addressing enablement under 35 USC 112, the US Court of Appeals for the Federal Circuit concluded that an asserted claim was invalid because the specification failed to enable its full scope, even though...more

PTAB May Disregard New Evidence Presented at Oral Argument

The US Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board (PTAB) is not required to consider evidence presented for the first time at oral argument in an inter partes review (IPR). Dell...more

Challenger Bears Burden of Proof for Unpatentability of Proposed Amended Claims

In an opinion addressing the burden of proof for unpatentability for a proposed amended claim in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit concluded that the challenger bears the burden of...more

Respondent Has Standing in Appeal from PTAB

In an opinion addressing the standing of a respondent in an appeal from an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB or Board), the US Court of Appeals for the Federal Circuit concluded that the...more

Disclosed Structure Restricts Breadth of Means-Plus-Function Limitations

In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more

PTAB Free to Adopt Claim Constructions Independent of Party Contentions

The US Court of Appeals for the Federal Circuit affirmed that the Patent Trial and Appeal Board (PTAB) may arrive at its own claim broadest reasonable interpretation (BRI) independent of those proffered by the parties and...more

Reconsideration of Institution Decisions Is Also “Final and Nonappealable”

In an opinion addressing whether a decision by the Patent Trial and Appeal Board (PTAB or Board) to reconsider a decision on institution is “final and nonappealable,” the US Court of Appeals for the Federal Circuit reaffirmed...more

Claims Withdrawn Because of Rejection May Limit Claim Scope **WEB ONLY**

In an opinion addressing prosecution history estoppel, the US Court of Appeals for the Federal Circuit affirmed a district court’s decision granting summary judgment of non-infringement, finding that the patentee was estopped...more

Post-Grant Review May Be Used to Invalidate Patents Directed to Patent-Ineligible Subject Matter

Addressing patent-eligible subject matter issues, the Patent Trial and Appeal Board (PTAB or Board) issued a final written decision in a post-grant review (PGR) finding all claims of a newly issued patent unpatentable under...more

When Distinguishing Statements May Be Considered Disclaimers of Claim Scope

Addressing disclaimer of claim scope, the US Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment of non-infringement, finding that the patentee clearly and unmistakably disclaimed...more

Inter Partes Review Institution Decisions Not Appealable, Broadest Reasonable Interpretation Remains Standard

In Depth - The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more

PTAB Disinclined to Tailor Protective Orders or Interfere with Protective Orders Issued in Parallel Proceedings - ASML Neth. B.V....

In a pair of orders addressing confidential information acquired in parallel proceedings, the Patent Trial and Appeal Board (PTAB or Board) denied (1) a request to modify the Board’s default protective order to protect...more

You Can’t Spell “Pressurized Collection Vessel” Without “Collection” (Akzo Nobel Coatings, Inc. v. Dow Chem. Co.)

In an opinion addressing claim construction, infringement and indefiniteness, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s findings that the asserted claims were not indefinite and not...more

Joinder Motions Do Not Nullify the One-Year Statutory Bar for Petitions - ZTE Corp. v. Adaptix, Inc.

Addressing whether the concurrent filing of a motion for joinder is sufficient to overcome the one-year statutory bar on inter partes review (IPR) petitions, the Patent Trial and Appeal Board (PTAB or Board) denied a...more

Design Patentees Are Entitled to Infringers’ Unapportioned Total Profits - Nordock, Inc. v. Systems Inc.

In an opinion addressing the proper measure of damages for design patent infringement, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a district court’s order denying a motion for a new trial on...more

Broadest Reasonable Interpretation Persists as Standard for Claim Construction in AIA Proceedings - In re Cuozzo Speed Techs., LLC

In a deeply divided opinion addressing the claim construction standard in post-grant America Invents Act (AIA) proceedings, the U.S. Court of Appeals for the Federal Circuit denied a petition for rehearing en banc, leaving in...more

No Substantial Change in Standard for Indefiniteness Under “Reasonable Certainty” Test - Biosig Instruments, Inc. v. Nautilus,...

In an opinion addressing the standard for indefiniteness in view of the Supreme Court of the United States’ 2014 “reasonable certainty” test, the U.S. Court of Appeals for the Federal Circuit maintained its reversal of the...more

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