Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast
Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more
The Patent Trial and Appeal Board (PTAB or Board) has denied institution of a petition for inter partes review (IPR) because the petitioner failed to show that its primary asserted prior reference, available through the...more
Yita LLC petitioned for IPR of two patents owned by MacNeil IP LLC. This summary focuses on the proceedings on MacNeil’s patent relating to vehicle floor trays that “closely conform[]” to certain walls of the vehicle foot...more
Although merely exemplifying the burden imposed on an appellant by the Federal Circuit's substantial evidence standard of review over decisions by the U.S. Patent and Trademark Office regarding the facts underlying legal...more
The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board non-obviousness decision, finding that the context of the proposed combination of prior art in the Board’s obviousness inquiry...more
This article compares two recent Federal Circuit opinions concerning IPR cases addressing the nexus requirement for objective indicia of non-obviousness. These cases revolve around the patentee’s use of a commercial...more
This decision addresses the PTAB’s secondary considerations analysis in an IPR Final Written Decision. Background - Appellant Yita sought inter partes review of two patents sharing a specification, both of which are...more
Following a jury verdict finding infringement of two patents and awarding $2.2 billion, the Patent Trial & Appeal Board issued a final written decision finding all claims in one of the asserted patents invalid. The Board...more
Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more
In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more
In a rare move, the interim Director of the U.S. Patent Office granted review of a final written decision in an inter partes review proceeding. In its request for Director review, the patent owner argued that the Patent Trial...more
Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more
In a nonprecedential decision, the Federal Circuit gave a mixture of success and failure to the parties in four separate inter partes review decisions by the Patent Trial and Appeal Board, in C.R. Bard, Inc. v. Medline...more
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
In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and...more
Chemours Company FC, LLC v. Daikin Industries, Ltd., Appeal Nos. 2020-1289, -1290 (Fed. Cir. July 22, 2021) - In this week’s Case of the Week, the Federal Circuit reversed a PTAB decision in consolidated IPRs that two...more
In a relatively unusual outcome, the US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board (Board) decision finding non-obviousness in an inter partes review (IPR). Becton, Dickinson, and Co. v....more
The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more
Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court. The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more
The US Court of Appeals for the Federal Circuit overturned a finding of non-obviousness of certain claims relating to a device for the detection of skin cancer, finding that the Patent Trial & Appeal Board erred in applying...more
284-1. The Federal Circuit Finds Standing for Appeal Based on Risk of Infringement; Vacates Board Determination that Raytheon Claims are Nonobvious - The Federal Circuit recently vacated and remanded a Patent Trial and...more
In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24,...more