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Patents CAFC Patent Litigation

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

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Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Fenwick & West LLP

En banc Hearing Petition Filed on Recent Fed. Circ. Collateral Estoppel Decision

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The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more

A&O Shearman

Standing & Product Development: Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

Irwin IP LLP

On-Sale Bar Arguments Fizzle Out at the Federal Circuit 

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Celanese Int'l Corp. v. Int'l Trade Comm'n, No. 2022-1827, 2024 WL 3747277, at *1 (Fed. Cir. Aug. 12, 2024) - Manufacturers beware! Your sales of products based on secret manufacturing processes may invalidate your...more

Dinsmore & Shohl LLP

Excluding Prior Art Based on Private Sales? Federal Circuit Says No.

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A private sale may start an inventor’s one-year filing clock, but it likely won’t save a patentee from an intervening prior art reference. On July 31, 2024, in a precedential decision, the U.S. Court of Appeals for the...more

A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

Dinsmore & Shohl LLP

Estoppel Principles in Patent Office Proceedings

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On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...more

Quarles & Brady LLP

R.I.P. Mr. Rosen: Federal Circuit Upends Longstanding Design Patent Obviousness Test

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Upending decades of continuity in the world of design patents, the United States Court of Appeals for the Federal Circuit (“CAFC”), sitting en banc in LKQ Corporation v. GM Global Technology Operations LLC, overturned the...more

Haug Partners LLP

Roku, Inc. v. International Trade Commission – The Power of Words in Patent Assignments

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued its most recent precedential decision on patent assignments and satisfying the “domestic industry” requirement at the International Trade Commission (“ITC”) in...more

Quarles & Brady LLP

Design Patent Obviousness Inquiry Is Up for Review at the CAFC

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As we have previously written about, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has granted a petition for an en banc rehearing of LKQ Corp. et al v. GM Global Technology to rule on the...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Jenner & Block

Enablement Bar for Drug Patents

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On May 18, 2023, the Supreme Court affirmed the Federal Circuit’s (CAFC) decision on enablement in Amgen Inc. v. Sanofi, 987 F.3d 1080 (CA Fed. 2021). The Court thus left in place a significant CAFC decision making it more...more

Irwin IP LLP

Obviousness-Type Double Patenting is Alive and Well 

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In a recent decision, the Court of Appeals for the Federal Circuit (“CAFC”) resolved district court splits regarding obviousness-type double patenting (“ODP”) by holding that ODP is still a valid challenge to patent validity...more

Quarles & Brady LLP

Uncertainty Ahead if Design Patent Obviousness Test is Abrogated by en banc CAFC

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In a surprising move, the Court of Appeals for the Federal Circuit (“CAFC”) has granted a petition for rehearing en banc on the issue of whether the test for determining obviousness of design patents has been overruled by the...more

Irwin IP LLP

Olé!  CAFC Rules Patent Bullfight Must Go On 

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The Court of Appeals for the Federal Circuit (“CAFC”) recently revived a patent infringement suit dismissed in the Western District of Wisconsin brought by Inguran, LLC (“Inguran”) against ABS Global, Inc. (“ABS”). The CAFC...more

Buckingham, Doolittle & Burroughs, LLC

Amgen Ratifies CAFC’s Requirement to Enable a Claim’s Full Scope

The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more

Jenner & Block

Client Alert: Supreme Court Affirms High Enablement Bar for Drug Patents

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On May 18, 2023, the Supreme Court affirmed the Federal Circuit’s (CAFC) decision on enablement in Amgen Inc. v. Sanofi, 987 F.3d 1080 (CA Fed. 2021). The Court thus left in place a significant decision making it more...more

Irwin IP LLP

CAFC Holds Priority Favors True Trailblazers, Not Maze-Like Paths Through a Forest of Prior Applications: Regents of the...

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The Court of Appeals for the Federal Circuit (“CAFC”) recently upheld a decision of the Patent Trial and Appeal Board (“PTAB”) that found some claims of U.S. Patent 8,815,830 (“the ’830 patent”) unpatentable as anticipated....more

Irwin IP LLP

String ‘Em Up: Light Patentee OK to Notify Others of Patent Suit: Lite-Netics, LLC, v. Nu Tsai Cap. LLC, d/b/a Holiday Bright...

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Sticks and stones may break your bones, but don’t complain to the Court of Appeals for the Federal Circuit (“CAFC”) if a patentee calls you an infringer, claims you copied, or threatens to sue your customers.  Holding speech...more

Irwin IP LLP

No Handling Necessary: Industry Demo Was A Public Use: Minerva Surgical, Inc. v. Hologic, Inc., 2023 WL 1999900 (Fed. Cir. Feb....

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Be careful of showing your claimed inventions at tradeshows.  On February 15, 2023, the Federal Circuit (“CAFC”) affirmed a summary judgment ruling that, by merely showcasing an embodying device at an industry event (the...more

Jones Day

Fed. Circ. Affirms PTAB Decisions Over Microphone IP

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On June 1, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decisions in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. regarding classification of the...more

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

In Hunting Titan v. DynaEnergetics, Federal Circuit Affirms Precedential Opinion Panel But Avoids Ruling on a Standard for Sua...

In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In...more

Mintz - Intellectual Property Viewpoints

Judge Alsup Certifies Two Hot Button Issues on Standard for Pleading Willful Infringement for Interlocutory Appeal to the CAFC

On March 16, 2022, U.S. District Judge William Alsup of the Northern District of California certified two of the hot button issues splitting district courts on the standard for pleading willful infringement (see order),...more

Troutman Pepper

Federal Circuit Clarifies Scope of IPR Estoppel

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Parties filing inter partes review (IPR) petitions should be aware of the estoppel implications on subsequent or parallel proceedings, including litigation pending in U.S. federal district courts. The U.S. Court of Appeals...more

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

In Qualcomm v. Apple, Federal Circuit Rules Out Applicant Admitted Prior Art As the “Basis” for Inter Partes Review

On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”)...more

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