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Claim Construction Patents Anticipation

McDermott Will & Emery

New Arguments Yield Same Unpatentability Outcome

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On remand from the US Court of Appeals for the Federal Circuit in connection with inter partes review (IPR) proceedings, the Patent Trial & Appeal Board considered the petitioner’s reply arguments and evidence regarding the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): A Trio of Claim Construction Cases

This year we are covering three claim construction cases from the Federal Circuit—one coming from the Board and the two from district court. Taken together, the cases are a good reminder of the high burden that a party must...more

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

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

Sheppard Mullin Richter & Hampton LLP

Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, 2022-1492 (Fed. Cir. Sept 1, 2023)

This case addresses the validity of two patents asserted against wireless communications technologies. In particular, this case discusses claim construction and post-issuance claim amendments that broaden the scope of...more

McDermott Will & Emery

Beware Enablement of Genus Antibody Claims

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The US Court of Appeals for the Federal Circuit invalidated yet another set of antibody genus claims, finding the case “materially indistinguishable” from those in the 2023 Supreme Court of the United States case, Amgen v....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023 #2

Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1532, -1533 (Fed. Cir. Aug. 7, 2023) In this week’s case of the week, the Federal Circuit re-affirmed existing precedent that in inter partes review proceedings before...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023 #3

Sequoia Technology, LLC v. Dell, Inc., Appeal Nos. 2021-2263, -2264, -2265, -2266 (Fed. Cir. April 12, 2023) In an appeal from a stipulated judgment of noninfringement and invalidity following an adverse claim construction...more

McDermott Will & Emery

It’s All in the Grammar: “A” Still Means “One or More,” but Single Component Must Perform All Claimed Functions

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The US Court of Appeals for the Federal Circuit affirmed a jury’s noninfringement verdict, finding that the district court correctly interpreted the article “a” and antecedent “said” in the asserted claims to require that a...more

McDermott Will & Emery

Disclaiming Claim Scope: Could the Patentee Have Anticipated This?

In the most recent decision in the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit affirmed a remand ruling from the Patent Trial & Appeal Board finding the challenged claims of VirnetX’s patents...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Knobbe Martens

Federal Circuit Review - March 2022

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Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious - In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a...more

Harris Beach PLLC

Intellectual Property Law: Year in Review 2021

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Specification and Prosecution History Narrow the Plain Meaning of “0.001%.” The claim at issue included a concentration of 0.001% of PVP. The term’s plain meaning is 0.001% within one significant figure (i.e., 0.0005% to...more

Smart & Biggar

Federal Court of Appeal upholds decision finding Seedlings' LifeCard patent invalid and not infringed by Pfizer’s EpiPen

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On July 28, 2021, the Federal Court of Appeal (FCA) dismissed Seedling’s appeal from the Federal Court decision of Justice Grammond (2020 FC 1, previously reported), which concluded that certain claims of Seedlings' LifeCard...more

Smart & Biggar

Federal Court upholds validity of one pneumococcal vaccine patent, but holds two other patents invalid

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Update: Wyeth’s appeal was discontinued. On April 30, 2021, the Federal Court issued its decision relating to the validity of three patents relating to Pfizer’s PREVNAR 13, a 13-valent pneumococcal polysaccharide protein...more

McDermott Will & Emery

Size Matters in Obviousness Analysis

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The US Court of Appeals for the Federal Circuit affirmed in part and reversed in part two Patent Trial and Appeal Board (Board) decisions, finding that the Board erred in its construction of certain claim terms relating to an...more

McDonnell Boehnen Hulbert & Berghoff LLP

St. Jude Medical, LLC v. Snyders Heart Valve LLC (Fed. Cir. 2020)

At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court's docket,...more

Smart & Biggar

Seedlings’ LifeCard patent found invalid and not infringed by Pfizer’s EpiPen

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Update: On July 28, 2021, the Federal Court of Appeal dismissed Seedling’s appeal from Justice Grammond’s decision: Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2021 FCA 154 (see article here). On January 2,...more

McDermott Will & Emery

Post-SAS: PTAB Is Obligated to Hear Non-Instituted Grounds

Addressing whether the Patent Trial and Appeal Board (PTAB) exceeded its authority and deprived the patent owner of due process by belatedly considering a non-instituted ground in an inter partes review (IPR) proceeding, the...more

Knobbe Martens

Duncan Parking Technologies v. IPS Group, Inc.

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Federal Circuit Summary - Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California. Summary: A person is a joint inventor of the anticipating...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2019 #2

PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2013-1527, 2014-1121, -1526, -1528 (Fed. Cir. Jan. 11, 2019) - In the continuing saga between WesternGeco and ION Geophysical, a Federal...more

Knobbe Martens

Federal Circuit Review - August 2018

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The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more

Knobbe Martens

Federal Circuit Review - July 2018

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Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

Knobbe Martens

TF3 Limited v. TRE Milano, LLC

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Federal Circuit Summary - Before Newman, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: Claim construction was not reasonable where it extended the breadth of the claims beyond what was...more

Jones Day

Anticipation by Combining Elements from the Four Corners of a Reference

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In a January 12 article, Anticipation Requires More Than A Reference That Discloses All The Elements, we discussed the Microsoft Corp v. Biscotti, Inc. case, where the Federal Circuit affirmed a decision of the PTAB finding...more

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