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Patents Prior Art Expert Testimony

Akin Gump Strauss Hauer & Feld LLP

PTAB: Patent Drawings Without Precise Measurements May Be Relied Upon as Prior Art, but Only for What They Clearly Show

The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation.  On...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

McCarter & English, LLP

Patent Office Cancels Patents for Inadequate Voluntary Disclosure in IPRs

Inter partes reviews (IPRs) are litigation-like procedures held before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office that are used to challenge the validity of patents. Typically,...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Precedential Ruling: Expert Declaration Devoid of Supporting Evidence Dooms IPR Petition

The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Akin Gump Strauss Hauer & Feld LLP

IPR Petition Denied Due to Expert’s Lack of Relevant Experience

A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more

McDonnell Boehnen Hulbert & Berghoff LLP

ClearOne, Inc. v. Shure Acquisition Holdings, Inc. (Fed. Cir. 2022)

Self-similarity is a characteristic found in many physical, natural, and human-made systems.  In short, it describes a class of structures or behaviors that are at least partially-invariant to time or scale.  Thus, these...more

McDonnell Boehnen Hulbert & Berghoff LLP

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2022)

Almost four years ago, in a relatively rare occurrence based on there being an insufficient factual record to permit proper appellate review, the Federal Circuit vacated a District Court decision rendering invalid the claims...more

McDonnell Boehnen Hulbert & Berghoff LLP

Cornell Research Foundation, Inc. v. Vidal (Fed. Cir. 2022)

Last month in Cornell Research Foundation, Inc. v. Vidal, the Federal Circuit affirmed the Patent Trial and Appeal Board's determinations in six inter partes review proceedings that invalidated the challenged claims for being...more

Akin Gump Strauss Hauer & Feld LLP

Discussion of Inventors’ Path in Expert’s Obviousness Opinion Warrants Partial Exclusion in Bench Trial

In the weeks preceding a recent Hatch-Waxman bench trial, a district court excluded portions of an expert’s opinion on obviousness that addressed internal documents and inventor testimony concerning the “inventors’ path” to...more

Goodwin

Issue 37: PTAB Trial Tracker

Goodwin on

Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art - In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied...more

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

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

PTAB Strategies and Insights Newsletter: May 2022

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

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Snell & Wilmer

Federal Circuit Upholds a Silent Written Description

Snell & Wilmer on

In a precedential opinion this week, the Federal Circuit affirmed a district court judgment in favor of Novartis Pharmaceuticals, in an appeal brought by HEC Pharm challenging the written description in Novartis’s 9,187,405...more

McDonnell Boehnen Hulbert & Berghoff LLP

Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

When does the absence of evidence turn into evidence of absence, and when does such absence amount to an adequate written description of the absence of a step of a method claim?  This is a question that comes readily to mind...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (March 29-April 2): A POSA By Any Other Name …

In a slow week, the Federal Circuit nevertheless gave patent litigators everywhere a non-precedential opinion to nibble on about the definition of the ever-present person having ordinary skill in the art.  Below we provide...more

McDonnell Boehnen Hulbert & Berghoff LLP

Bracco Diagnostics Inc. v. Maia Pharmaceuticals, Inc. (Fed. Cir. 2020)

Stipulating to infringement after a contrary claim construction is a conventional stratagem for a losing party to have a final judgment that can be challenged before the Federal Circuit.  The risk of course, is that if the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Chevron U.S.A. Inc. v. University of Wyoming Research Corp. (Fed. Cir. 2020)

Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sherwin-Williams Co. v. PPG Industries, Inc. (W.D. Pa. 2020)

Earlier this month, in Sherwin-Williams Co. v. PPG Industries, Inc., Special Master Henry M. Sneath issued a Report and Recommendation in the U.S. District Court for the Western District of Pennsylvania that a motion by...more

Jones Day

Fed. Circuit Cautions Against Narrow Application of Analogous Art Test

Jones Day on

One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1,...more

Mintz - Intellectual Property Viewpoints

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more

Goodwin

The PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

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