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Appeals CAFC Patents

A&O Shearman

Federal Circuit Upholds Invalidation Of Photo-Tagging Patents Under 35 U.S.C. § 101 And Alice/Mayo

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On September 17, 2024, Judges Taranto, Chen and Cunningham of the United States Court of Appeals for the Federal Circuit (“CAFC”) upheld the invalidation of a patent belonging to Angel Technologies Group, LLC and dismissed...more

A&O Shearman

Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

McDonnell Boehnen Hulbert & Berghoff LLP

Beteiro, LLC v. DraftKings, Inc. (Fed. Cir. 2024)

Recently, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion in Beteiro, LLC v. DraftKings Inc.[1]  This case is yet another case where the Federal Circuit upheld invalidity under § 101.  Here, the patents...more

Haug Partners LLP

STUDying Investments Patent-by-Patent: Zircon, Corp. v. International Trade Commission

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued its most recent precedential decision on satisfying the economic prong of the domestic industry requirement at the International Trade Commission in Zircon...more

Haug Partners LLP

Roku, Inc. v. International Trade Commission – The Power of Words in Patent Assignments

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued its most recent precedential decision on patent assignments and satisfying the “domestic industry” requirement at the International Trade Commission (“ITC”) in...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Mintz - Intellectual Property Viewpoints

Judge Albright Holds Willful Infringement Pleading Does Not Require Allegations of Egregious Infringing Behavior

On July 12, 2022, U.S. District Judge Alan D. Albright of the Western District of Texas denied alleged infringer Lenovo’s motion to dismiss ACQIS’s willful and indirect infringement and enhanced damages claims, holding that...more

Mintz - Intellectual Property Viewpoints

Judge Alsup Certifies Two Hot Button Issues on Standard for Pleading Willful Infringement for Interlocutory Appeal to the CAFC

On March 16, 2022, U.S. District Judge William Alsup of the Northern District of California certified two of the hot button issues splitting district courts on the standard for pleading willful infringement (see order),...more

Rothwell, Figg, Ernst & Manbeck, P.C.

In Qualcomm v. Apple, Federal Circuit Rules Out Applicant Admitted Prior Art As the “Basis” for Inter Partes Review

On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”)...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Federal Circuit Reaffirms Obviousness Standard by Reversing PTAB in University of Strathclyde v. Clear-Vu Lighting

Earlier this month, in University of Strathclyde v. Clear-Vu Lighting LLC, the Court of Appeals for the Federal Circuit (“the CAFC”) reversed a decision by the Patent Trial and Appeal Board (“the Board”) that found claims 1-4...more

WilmerHale

CAFC Patent Cases - February 2021 #2

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Precedential Federal Circuit Opinions - CHUDIK v. HIRSHFELD [OPINION]  (2020-1833, 2/8/2021) (Taranto, Bryson, Hughes) - Taranto, J.  Affirming PTO decision regarding length of patent term adjustment. The statutory...more

Mintz - Intellectual Property Viewpoints

Fox Factory v. SRAM – According to CAFC, No Presumption of Nexus for Bicycle Chainring Patents; IPR Decision Reversed and Remanded

On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”)...more

International Lawyers Network

Can Design Patents Be Limiting in Enforcement?

Suppose that you have an invention disclosure for a design of an article that you want to protect?  When you review the invention disclosure, you notice that the design is ornamental, for example a pattern, on an article such...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2018

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sunstein LLP

Section 101 Gains a Toehold in IPRs

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Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more

Troutman Pepper

CAFC Affirms PTAB’s Decision To Invalidate Cialis and Adcirca Patents

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In a recent decision, the Court of Appeals for the Federal Circuit (CAFC) affirmed decisions in two inter-partes review (IPR) proceedings that patents owned by ICOS Corporation directed to tadalafil formulations (used in the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

CAFC Rule 36 Judgement: 24 Hour Affirmance with No Explanation

Nothing hurts worse than a Rule 36 (single page, single sentence affirmance of the decision below) after years of work and millions of dollars spent on a case. Rule 36 makes rehearing, en banc review, and/or cert petitions a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Issues New Standard Operating Procedure Addressing Remands from Federal Circuit: The New Standards and How They May Affect...

On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Recent Trends on the U.S. Doctrine of Equivalents

U.S. courts have long recognized that a product or process which does not literally infringe a patent can nevertheless infringe under the "doctrine of equivalents" if it is equivalent to the claimed invention. The percentage...more

Foley & Lardner LLP

CAFC Finds Harmless Error in USPTO Reliance On Doctrine of Inherency

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In Southwire Co. v. Cerro Wire LLC, the Federal Circuit upheld the USPTO decision rendered in an inter partes reexamination proceeding that found Southwire’s patent invalid as obvious. Although the court found that the USPTO...more

Foley & Lardner LLP

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

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In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

Jones Day

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

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On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

Mintz - Intellectual Property Viewpoints

Supreme Court to Decide the Constitutionality of Inter Partes Review

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more

Foley & Lardner LLP

CAFC Finds ANDA Infringement Despite Differences Between FDA Labeling And Claim Language

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In a non-precedential decision issued in Braintree Labs., Inc. v. Breckenridge Pharmaceutical, Inc., the Federal Circuit reversed the district court’s grant of summary judgment of noninfringement in favor of Breckenridge, and...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Reverses PTAB’s Holding of Anticipation Despite an Element Missing from the Prior Art

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in...more

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