News & Analysis as of

Inventions Patent Litigation Patent Infringement

Kilpatrick

Bring Back the Models – Shut Down the Patent Trolls

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Imagine your company is suddenly inundated with dozens of baseless patent infringement lawsuits. This scenario is becoming all too common as corporate America grapples with a post-COVID surge in frivolous patent claims,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Vascular Solutions LLC v. Medtronic, Inc. (Fed. Cir. 2024)

The metes and bounds of how courts should consider indefiniteness under 35 U.S.C. § 112(b) were addressed most recently by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).  Regardless,...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

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On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

Foley & Lardner LLP

Federal Circuit Says No Timing Requirement To Qualify As A POSITA

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Last week, in Osseo Imaging, LLC v. Planmeca USA Inc., No. 2023-1627 (Fed. Cir. Sept. 4, 2024), the Federal Circuit held that “[a]n expert need not have acquired the skill level prior to the time of the invention to be able...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

BakerHostetler

Patent Experts: No Ordinary Skill in the Art at the Time of Invention? No Problem!

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The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent....more

Dinsmore & Shohl LLP

Federal Circuit Reiterates the Urgency of Opting for Patent Protection or Trade Secrecy, as the On-Sale Bar to Patentability Looms

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Under 35 U.S.C. § 102, the “on-sale bar” invalidates a patent if an inventor has sold or made the invention publicly available more than one year before filing the patent application. Recently, the United States Court of...more

Hudnell Law Group

Intrinsic Record Paramount In Rule 12 Eligibility Determinations

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In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024 #3

Allergan USA, Inc. v. MSN Laboratories Private Ltd., Appeal No. 2024-1061 (Fed. Cir. August 13, 2024) In this week’s Case of the Week, the Federal Circuit clarifies rules relating to when an applicant’s patent can be...more

Seyfarth Shaw LLP

Olympic Thrills to Patent Skills: Understanding Apparatus and Method Claims

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This year’s Olympic Games have already been packed with compelling storylines. These storylines include the somewhat controversial opening ceremony to Yusuf “hold my beer” Dikec winning hearts and the silver medal in pistol...more

Jones Day

Prior Art and Public Availability: Key Decisions in German Patent Litigation

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The Situation: Even after the introduction of the European Unitary Patent Court, Germany remains a key battleground in major patent litigations. In the bifurcated German litigation system, nullity cases are heard before the...more

Jones Day

USPTO Issues Patent Eligible Subject Matter Guidance for AI Inventions

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The Situation: Concerns that uncertain and unpredictable patent subject matter eligibility jurisprudence thwarts U.S. economic and technological advancements are especially acute in the fast advancing AI space. Stakeholders...more

AEON Law

Patent Poetry: Federal Circuit Rules on Patent Damages Based on Foreign Conduct

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The Federal Circuit has ruled that a US patent-holder plaintiff may be able to recover damages for a defendant’s foreign sales of infringing products if the foreign sales were proximately caused by the defendant’s improperly...more

Jones Day

Shifting Burden Dooms Patent Owner

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In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

Kilpatrick

Federal Circuit Upends Design Patent Validity Test

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Unlike utility patents, which are frequently invalidated on obviousness grounds, design patents historically faced a rigid test making obvious findings rare. The Federal Circuit has just issued an en banc decision that upends...more

Manatt, Phelps & Phillips, LLP

No Joint Inventorship When Contribution Is Insignificant in Quality Compared to Main Invention

In Hip, Inc. v. Hormel Foods Corp., the U.S. Court of Appeals, Federal Circuit, held that there was no joint inventorship when the contribution of preheating meat pieces using an infrared oven was insignificant in quality...more

Knobbe Martens

Claim Construction When Uniformly Referring to Aspects of an Invention

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Chewy, Inc. v. International Business Machines Corporation - Before Moore, Chief Judge, Stoll and Cunningham. Appeal from the United States District Court for the Southern District of New York....more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

Jones Day

Federal Circuit Slices PTAB’s Printed Publication Finding

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Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to...more

Fitch, Even, Tabin & Flannery LLP

Government’s Royalty-Free Licensing Rights Affirmed Over USF Patent

On February 9, in University of South Florida Board of Trustees v. United States, the Federal Circuit upheld royalty-free license rights of the U.S. government over a University of South Florida (USF) patent directed to...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2024

Univ. of South Florida Bd. of Trustees v. United States, Appeal No. 2022-2248 (Fed. Cir. Feb. 9, 2024) In this week’s Case of the Week, the Federal Circuit examined the scope of a provision of the Bayh-Dole Act of 1980 (35...more

Knobbe Martens

USPTO Says Wands Still Controls Enablement Analysis Post-Amgen

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On January 9, 2024, the USPTO published guidelines for its patent examiners when evaluating compliance with the enablement requirement in light of the U.S. Supreme Court’s recent decision in Amgen Inc. et al. v. Sanofi et...more

Linda Liu & Partners

Influence of the Determination of Technical Problem Actually Solved on the Determination of Technical Teaching | Case on...

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The technical problem actually solved by an invention should be determined based on distinguishing technical feature of the claims as compared with the most-related prior art and the technical effect can be known by a person...more

Jones Day

Federal Agencies Seeking Patent Seizure Authority Through Draft NIST Guidance

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The Situation: On December 8, 2023, the National Institute of Standards and Technology ("NIST") released a proposed framework for federal agencies regarding the exercise of the government's march-in rights for federally...more

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