News & Analysis as of

Patent Trial and Appeal Board Patent Infringement Mootness

Akin Gump Strauss Hauer & Feld LLP

Merger of District Court Dismissals Torpedoes Appeal from PTAB Decision at Federal Circuit

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more

Jones Day

Federal Circuit Dismisses Appeals As Moot

Jones Day on

Koss filed a patent infringement suit against Bose asserting the ’155, ’934, and ’025 patents, after which Bose petitioned for inter partes review of all three patents before the PTAB. The district court case was stayed...more

WilmerHale

Federal Circuit Patent Watch: Printed Matter Doctrine Applies to Communicative Content, Not All Communications

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  IOENGINE, LLC V. VIDAL (21-1227 Lourie, Chen, Stoll) - Chen, J.  The Court reversed in part and affirmed in part the Final Written Decisions of the Patent Trial and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2024

SnapRays v. Lighting Defense Group, Appeal No. 2023-1184 (Fed. Cir. May 2, 2024) Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction....more

Goodwin

Issue 33: PTAB Trial Tracker

Goodwin on

QUESTIONS REGARDING THE APPLICATION OF THE FINTIV FACTORS REMAIN - The Board has increasingly exercised its discretion to deny petitions in recent months, mainly due to the application of the Fintiv factors due to parallel...more

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

PTAB Strategies and Insights - January 2021: Patent Owner's District Court Disavowal Moots Petitioner's PTAB-Based CAFC Appeal...

In ABS Global, Inc. v Cytonome/ST, LLC, the Federal Circuit dismissed a Petitioner’s appeal from a U.S. Patent Trial and Appeal Board (“PTAB”) final written decision when it determined that a Patent Owner’s voluntary...more

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

PTAB Strategies and Insights - January 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

Rothwell, Figg, Ernst & Manbeck, P.C.

ABS Global v. Cytonome/St, LLC: Mootness and Preserving the Argument for Vacatur

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017,...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (January 4-8): Mooting your opponent’s appeal

Now that the new year has started, we’re seeing an uptick in precedential opinions.  This week we decided to turn back to patent appeals, taking a look at IPRs and Article III—always a fun topic.  Below we provide our usual...more

Morrison & Foerster LLP - Federal Circuitry

Orders of Interest Roundup

At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal...more

Robins Kaplan LLP

Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc.

Robins Kaplan LLP on

PLAINTIFF’S DISCLAIMER OF CLAIMS FOUND INVALID BY THE PTAB MOOTED ANY CONTROVERSY BEFORE THE APPELLATE COURT ASSOCIATED WITH THAT PATENT, AND A SECOND PATENT-IN-SUIT WAS NOT INVALID BECAUSE THE DISTRICT COURT DID NOT ERR IN...more

McDermott Will & Emery

No Concrete Controversy if There Are No Claims

McDermott Will & Emery on

In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more

Knobbe Martens

Broad Description in Specification Defeats Patent Owner’s Bid for Narrow Construction

Knobbe Martens on

BTG INTERNATIONAL LIMITED v. AMNEAL PHARMACEUTICALS LLC - Before Wallach, Moore, and Chen. Consolidated appeals from the Patent Trial and Appeal Board and the U.S. District Court for the District of New Jersey. ...more

McDermott Will & Emery

Mootness on Appeal from PTAB

The US Court of Appeals for the Federal Circuit dismissed an appeal of an inter partes review (IPR), finding that the challenger lacked appellate standing because it had terminated its attempts to develop the infringing...more

Jones Day

Timely Joinder Cannot Save Untimely IPR When Nothing to Join

Jones Day on

In IPR2017-01054 and IPR2017-01055 (Fresenius Kabi USA, LLC v. Hospira Inc.), the PTAB denied institution of inter partes reviews of U.S. Patent Nos. 8,242,158 and 8,338,470, because Petitioner Fresenius filed the IPR...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Mylan v. Aurobindo the Circuit affirms the grant of a preliminary injunction based upon the infringement of one of the three patents in suit. However, the panel reverses the injunction as to the other two patents based on...more

Proskauer - New England IP Blog

Lights Out for Invalidity and Unenforceability Counterclaims After PTAB Invalidates Design Patent

Flipping the switch on the last remaining claims in the case, a Massachusetts Court recently dismissed as moot two defendants’ counterclaims for declaratory judgment of invalidity and unenforceability following a PTAB...more

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