In Maxell, Ltd. v. Amperex Technology Limited, 2023-1194 (Fed. Cir. Mar. 6, 2024), the Federal Circuit reaffirms that a patent claim that includes narrowing limitations requiring only some elements of a Markush group recited...more
The Federal Circuit has affirmed a decision of the Patent Trial and Appeal Board (PTAB or Board) finding unpatentable certain claims of a patent for making semiconductor devices. The case is Bell Semiconductor LLC v....more
The US Court of Appeals for the Federal Circuit affirmed that challenged claims were invalid as anticipated based on principles of inherency where the disclosed prior art formulations and processes necessarily met a disputed...more
Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more
Addressing the issue of negative claim limitations, the US Court of Appeals for the Federal Circuit granted a petition for panel rehearing, vacated its prior decision (authored by now-retired Judge O’Malley) and reversed the...more
In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held patent claims invalid for lack of written description where a negative limitation was...more
Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim...more
The US Court of Appeals for the Federal Circuit affirmed Patent Trial & Appeal Board (Board) patentability decisions after determining that the Board did not err in construing multiple terms within the challenged patents....more
An en banc rehearing petition to the Federal Circuit seeks to breathe life back into the widespread practice of patenting a genus of compounds by claiming their common functional characteristics. This claiming practice was...more
A little less than four years ago, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement...more
NEVILLE v. FOUNDATION CONSTRUCTORS, INC. Before Lourie, O’Malley, and Chen. Appeal from the United States District Court for the Central District of California. Summary: The Federal Circuit affirmed a construction of...more
Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more
SHOES BY FIREBUG LLC v. STRIDE RITE CHILDREN'S GROUP - Before Lourie, Moore, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: In similar claims of two related patents, one preamble was limiting...more
Addressing the disclosure-dedication doctrine, the US Court of Appeals for the Federal Circuit concluded that the disclosure-dedication doctrine barred a patent owner’s claim of infringement under the doctrine of equivalents...more
Key Points - Federal Circuit issued precedential opinion in Hospira Inc. v. Fresenius Kabi USA, LLC that affirmed obviousness of a liquid drug patent claim, encouraging future patent challengers to raise the issue of...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
In an appeal stemming from the denial of a patent application under § 102(b), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) by holding that the claims’ preambles were claim...more
IN RE: DAVID FOUGHT, MARTIN CLANTON - Before Newman, Moore, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A preamble description of the invention as a “travel trailer” was a structural limitation....more
The US Court of Appeals for the Federal Circuit affirmed a district court’s finding, based largely on the prosecution history, that disputed “wherein” clauses were limiting and therefore the grant of a preliminary injunction...more
Finding that the number of possible embodiments that could fit within the limitations of the asserted claims numbered in the “tens of thousands,” the US Court of Appeals for the Federal Circuit held that the claims were not...more
CELLSPIN SOFT, INC. V. FITBIT, INC. ET AL. Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: While not all factual allegations that are...more
PATENT CASE OF THE WEEK - Papst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc., Appeal No. 2018-1777 (Fed. Cir. May 23, 2019) - In a sternly-worded decision this week, the Federal Circuit held claims to...more
Recently, the Federal Circuit breathed life, again, into U.S. Patent No. 7,802,310 (the ’310 patent), which is the subject of one of the longest running inter partes review (IPR) proceedings. In Pers. Web Techs., LLC v....more
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products,...more
The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims....more