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The United States Patent and Trademark Office’s (“USPTO”) Appeals Review Panel (“the Panel”) recently clarified that means-plus-function claims do not require that the specification disclose equivalents. See Ex parte...more
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
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 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
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first...more
Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. Below we provide our usual weekly...more
In a recent order issued in the Northern District of Texas, Judge Godbey denied a Defendant’s Rule 12(b)(6) motion despite the Federal Circuit’s holding that the asserted patent was invalid as indefinite. Hyosung TNS, Inc. v....more
In its recent decision, Fiber, LLC. v. Ciena Corp., No. 2019-1005 (Fed. Cir. Nov. 21, 2019), the Court of Appeals for the Federal Circuit (Federal Circuit) issued a reminder that the structure necessary to satisfy the...more
On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al.,...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
Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...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
Federal Circuit Summaries - Before Reyna, Taranto, and Hughes. Appeal from the Northern District of California. Summary: Failure to use the word “means” creates a rebuttable presumption that the term is not a...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
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
Addressing claim construction issues in connection with “means-plus-function” limitations, the US Court of Appeals for the Federal Circuit affirmed the district court’s decision to uphold a non-infringement verdict based on a...more
This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more
Federal Circuit Holds That Using A Contract Manufacturer Does Not Trigger An On-Sale Bar - In The Medicines Co. v. Hospira, Inc., Appeal Nos. 2014-1469, -1504, the Federal Circuit, en banc, held that the patentee’s deal...more
Addressing the issue of contempt for violation of a non-final injunction, a divided U.S. Court of Appeals for the Federal Circuit declined to rehear en banc a panel decision that vacated a civil contempt holding for violation...more
Addressing the question of what corresponding structure must be disclosed to support a means-plus-function claim element, the U.S. Court of Appeals for the Federal Circuit upheld a district court finding that eight...more
In Williamson v. Citrix Online, LLC, No. 2013-1130, the Federal Circuit recently overruled earlier precedent and eliminated the “strong” presumption that a functional claim limitation lacking “means” language does not invoke...more
In Williamson v. Citrix Online, announced on June 16, the Court of Appeals for the Federal Circuit ruled in a partially en banc opinion that claims expressed in terms of functionality can be subject to statutory requirements...more