New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more
The US Court of Appeals for the Federal Circuit reiterated that in the context of construing computer-implemented means-plus-function limitations, if the specification discloses some arguable algorithm, even if a party...more
The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant). In this post, we take a look back at how the Court closed out 2021 and...more
The US Court of Appeals for the Federal Circuit issued decisions in two separate inter partes reviews (IPRs), one involving a patent related to radio frequency communication systems and the other involving a patent related to...more
Intel Corp. v. Qualcomm Inc., Appeal Nos. 2020-1828, -1867 (Fed. Cir. Dec. 28, 2021) - The Federal Circuit issued two precedential decisions this week—both arising from IPRs filed by Intel against patents owned by...more
COCHLEAR BONE ANCHORED SOLUTIONS AB V. OTICON MED. AB - Before Taranto, O’Malley, and Newman. Appeal from the Patent Trial and Appeal Board. Summary: Anticipation and obviousness analysis by the PTAB is not impossible...more
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more
The Federal Circuit definitively rejected arguments to cancel challenged claims for reasons other than anticipation or obviousness in an inter partes review proceeding. In Samsung Electronics America, Inc., v. Prisua...more
The US Court of Appeals vacated a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that the disputed means-plus-function term was computer-implemented and therefore required the corresponding structure to...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
Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more
In an opinion addressing claim construction and Patent Trial and Appeal Board (PTAB) jurisdiction, the US Court of Appeals for the Federal Circuit concluded that while the PTAB had the authority to consider the patentability...more
The US Court of Appeals for the Federal Circuit agreed that the Patent Trial and Appeal Board (PTAB) did not err in its conclusions that a claim element reciting “means” did not invoke § 112 ¶ 6 and that the challenged claims...more
In AdjustaCam v. Newegg, the Circuit reverses the denial of attorney fees where Judge Gilstrap simply adopted a pre-Octane Fitness determination by a prior judge, despite the Circuit’s post-Octane Fitness remand of the case...more