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Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order

Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Filing an amended complaint does not nullify a dismissal order that was not later...more

En Banc Federal Circuit Adopts a New Test for Design Patent Obviousness

Before Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board....more

Ambiguous Phrase in a Patent Assignment Precludes Summary Judgment Regarding Standing

Before Dyk, Mayer, and Taranto. Appeal from the Central District of California. Summary: Applying California law, the phrase “entirely on my own time” in an employment agreement was found ambiguous and therefore precluded...more

IPR Petitioners Must Be Permitted to Respond to Claim Constructions First Proposed in Patent Owner Response

AXONICS, INC. v. MEDTRONIC, INC. Before Dyk, Lourie, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Where a patent owner in an IPR proposes a claim construction for the first time in a patent...more

A “Known Technique” for Showing a Motivation to Combine References

INTEL CORP. V. PACT XPP SCHWEIZ AG - Before Newman, Prost, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Under the “known-techniques” rationale, a motivation to combine two prior art references...more

Stipulation of Non-Infringement Found Insufficient for Appeal

Before Lourie, Dyk, and Stoll. Appeal from the United States District Court for the District of Delaware. ALTERWAN, INC. V. AMAZON.COM, INC., AMAZON WEB SERVICES, INC. Summary: The Federal Circuit declined to reach the...more

Judicial Review Is Available for PTO Director’s Fintiv Rulemaking Procedure

APPLE INC. v. VIDAL - Before Lourie, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of California. Summary: Judicial review is available to determine whether the PTO...more

Inventor’s Testimony Regarding Actual Reduction to Practice Was Sufficiently Corroborated

DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC. - Before: Reyna, Chen, and Stark. Appeal from the Patent Trial and Appeal Board. - Summary: The PTAB did not err in considering evidence corroborating actual reduction...more

Expert’s Unanswered Questions Do Not Make Claims Indefinite

NATURE SIMULATION SYSTEMS INC. v. AUTODESK, INC. - Before: Newman, Lourie, and Dyk. Appeal from the Northern District of California. - Summary: “Unanswered questions” raised about asserted claim terms did not render...more

A Computer Method Claim Must Improve the Functions of the Computer to Survive § 101

Summary: A patentee’s allegation that computer method claims made data analysis more efficient, without reference to the function or operation of the computer itself, was not sufficient to overcome a challenge under 35 U.S.C....more

Patent Term Adjustment Under 35 U.S.C. 154(b)(1)(C)(iii) Requires Reversal of Adverse Determination of Patentability

Summary: When a patent claim is subject to adverse determinations of patentability first before the PTO and again after appeal, the claim is not entitled to patent term adjustment for the period of the appeal even if the...more

An ANDA Specification that Directly Addresses Issues of Infringement Controls the Infringement Inquiry

Summary: An ANDA was held not to infringe asserted claims because the ANDA specifies pH ranges that fall outside of those recited in the asserted claims....more

No Recapturing of Surrendered Patent-Ineligible Subject Matter

Summary: When applying for reissue, a patent applicant may not recapture subject matter that was intentionally surrendered to overcome a § 101 rejection....more

Concentration of a Sub-Topically Applied Compound Is Measured at Topical Application

UNIVERSITY OF MASSACHUSETTS v. L’ORÉAL S.A. Before Prost, Mayer, and Taranto. Appeal from the United States District Court for the District of Delaware. Summary: In claims of two patents regarding skin enhancement,...more

Negative Claim Construction Found Inadequate

SOUND VIEW INNOVATIONS, LLC v. HULU, LLC - Before Prost, Mayer, and Taranto. Appeal from the United States District Court for the Central District of California. Summary: It was improper to find a claim limitation...more

Identical Elements Are Not Required for the Presumption of Obviousness Based on Overlapping Ranges

ALMIRALL, LLC v. AMNEAL PHARMACEUTICALS LLC - Before Lourie, Chen, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: Presumption of obviousness based on overlapping ranges applied where a...more

Indefiniteness Is Not Determined by the Claim Language Alone

NATURE SIMULATION SYSTEMS INC. v. AUTODESK, INC. Before Newman, Lourie, and Dyk.  Appeal from the United States District Court for the Northern District of California. Summary: It was improper for the district court...more

Enforcing a Patent Known to be Invalid Can Trigger Attorneys’ Fees

ENERGY HEATING, LLC v. HEAT ON-THE-FLY, LLC - Before Moore, Prost, and Stoll.  Appeal from the U.S. District Court for the District of North Dakota. Summary: Enforcing a patent with knowledge that it is invalid can...more

Willful Infringement Does Not Require “Wanton, Malicious, and Bad-Faith” Behavior

SRI INTERNATIONAL, INC. v. CISCO SYSTEMS, INC. Before LOURIE, O’MALLEY, and STOLL. Appeals from the United States District Court for the District of Delaware. Summary: Applying the proper test for willful...more

Authentication of Prior Art in an IPR Does Not Require Testimony

VALVE CORPORATION v. IRONBURG INVENTIONS LTD. Before Newman, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: For purposes of authenticating a prior art reference in IPR proceedings, the Board...more

Characterizing Plaintiff’s Actions as Attempts to “Manipulate Venue,” Federal Circuit Orders Transfer of Cases to More Convenient...

IN RE: SAMSUNG ELECS., CO., LTD. Before Lourie, Dyk, and Reyna.  On Petitions for Writs of Mandamus to the U.S. District Court for the Western District of Texas. Summary:  Manipulation of venue through...more

Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches

HYATT v. HIRSHFELD - Before Reyna, Wallach, and Hughes. Appeal from the United States District Court for the District of Columbia. Summary: The PTO met its burden to prove prosecution laches for bulk-filed patent...more

Licensee Lacks Standing to Appeal an Adverse IPR Decision Based On Royalty Payments for a Patent Portfolio and a Speculative...

APPLE, INC. v. QUALCOMM, INC. Before Moore, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents it licenses from Qualcomm, despite...more

Federal Circuit Affirms $173 Million Award

BAYER HEALTHCARE LLC v. BAXALTA INC. Before Newman, Linn, and Stoll. Appeal from the District of Delaware. Summary: In upholding a $173 million dollar award, the Federal Circuit permitted a damages expert to present a...more

Concrete Plans Establish Standing for IPR Appeals

GENERAL ELECTRIC COMPANY v. RAYTHEON TECHNOLOGIES CORP. Before Lourie, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A party has standing to appeal an adverse IPR decision if it has concrete...more

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