News & Analysis as of

Patent Litigation Prior Art Nonobvious

Knobbe Martens

Federal Circuit Review | March 2024

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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

McDermott Will & Emery

Sliced and Diced: Operating Manuals Are Printed Publications

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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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Yita LLC v. MacNeil IP LLC, 69 F.4th 1356 (Fed. Cir....

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

WilmerHale

Federal Circuit Patent Watch: The Board should not have to decode a petition

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Precedential and Key Federal Circuit Opinions - CYNTEC COMPANY, LTD. v. CHILISIN ELECTRONICS CORP., CHILISIN AMERICA LTD. [OPINION] (2022-1873, 10/16/23) (Moore, Stoll, Cunningham) - Stoll, J. The Court reversed the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2023 #3

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

Sheppard Mullin Richter & Hampton LLP

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

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

Haug Partners LLP

Analyzing Nexus: Recent Federal Circuit Opinions Where Individual Patent Claim Limitations Are in the Prior Art

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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

Haug Partners LLP

In re Couvaras: Limitations of Unexpected Results for Non-Obviousness of Claimed Mechanisms of Action

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On June 14, 2023, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board upholding an Examiner’s rejection of all pending claims in U.S. Patent Application 15/131,442 (’442 application). The Federal...more

McDermott Will & Emery

The Best Option Is Obviously Not the Only Option

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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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023 #2

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends

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

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (February 14-18): When Objective Indicia Evidence Both Is, And Is Not, Sufficient For...

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

Knobbe Martens

When an Unmet Need May Not Be Enough

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ADAPT PHARMA OPERATIONS LTD. V. TEVA PHARMS. USA, INC. Before Newman, Prost, and Stoll. Appeal from the United States District Court for the District of New Jersey. Summary: Recent attempts by competitors to achieve...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Troutman Pepper

Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast

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Please join Troutman Pepper's Intellectual Property and Health Sciences Practice Group for the sixth installment of the podcast series focused on strategy, trends, and other happenings at the PTAB. In this episode, Maia...more

McDonnell Boehnen Hulbert & Berghoff LLP

CVC Files Reply to ToolGen's Opposition to CVC Preliminary Motion No. 3

On May 20th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Substantive Preliminary Motion No. 3 in Interference No. 106,127 (which...more

McDonnell Boehnen Hulbert & Berghoff LLP

C.R. Bard, Inc. v. Medline Industries, Inc. (Fed. Cir. 2021)

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2021: For Partial Design Patents and Utility Patents Alike, Reliance on Objective Indicia...

In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit considered the Patent Trial and Appeal Board’s application of objective indicia to design patent claims. The Board had found that the prior art has the same...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2021

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

McDonnell Boehnen Hulbert & Berghoff LLP

The Federal Circuit Addresses Commercial Success

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

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 19-23): Considering Secondary Considerations

As expected, the Senate has voted to confirm Tiffany Cunningham as the Federal Circuit’s newest judge. This makes history, giving the Federal Circuit its first ever Black judge and bringing the Court to gender parity for the...more

McDermott Will & Emery

It’s Highlighted and Verified: Reversal of PTAB Non-Obviousness Decision

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

Jones Day

Nexus Required for Objective Indicia

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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

Akin Gump Strauss Hauer & Feld LLP

Strength of Objective Indicia from Prior Litigation Overcomes Strong Obviousness Challenge in IPR

In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness. In RTI...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: The Changing Face of Non-Obviousness

It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more

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