Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast
Defining Indefiniteness: When Are Claim Limitations Contradictory? In Maxell, Ltd., v. Amperex Technology Limited, Appeal No. 23-1194, the Federal Circuit held that two claim limitations are not contradictory if they...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
The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more
Volvo Penta appealed from a Board decision finding all of its claims unpatentable as obvious. The claims at issue covered a tractor-type stern drive for a boat. Volvo Penta raised three main issues on appeal, arguing (1) that...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness-type double patenting rejection, finding that an unexpected mechanism of action does not render the known use of a known...more
Clients sometimes ask intellectual property (IP) lawyers how they can patent or copyright their ideas and make money off them. The short answer is: you probably can’t. Neither patent law nor copyright law protects...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
Volvo Penta of the Americas, LLC v. Brunswick Corp., Appeal No. 2022-1765 (Fed. Cir. Aug. 24, 2023) In its only precedential patent case of the week, the Federal Circuit held the Patent Trial and Appeal Board erred in...more
This case addresses obviousness under 35 U.S.C. § 103 in relation to a method of increasing prostacyclin release to reduce hypertension in a patient. In particular, this case discusses issues relating to motivation to...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
In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s...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
A divided panel of the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that certain challenged claims were nonobvious after applying the substantial evidence test to resolve a...more
Recently, the Federal Circuit affirmed a finding of non-obviousness from the Patent Trial and Appeal Board (PTAB) of a design patent owned by GM. While non-precedential, this decision is nonetheless a valuable read because...more
Precedential Federal Circuit Opinions - PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. [OPINION] (2021-1942, 2021-1975, 9/27/2022) (Prost, Reyna, and Stark) - Prost, J. Affirming in part and vacating in part decision of...more
In Quanergy Systems, Inc. v. Velodyne Lidar USA, Inc.1, a Panel of the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) decisions that claims of a Velodyne patent were...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
Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the Patent Trial and Appeal Board rejected a patentee’s alleged...more
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 exception. It briefly returned to live...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