USPTO Proposes New Rules that Would Create a New Design Patent Practitioner Bar On May 16, 2023, the USPTO published proposed rules that provide for the creation of a new design patent practitioner bar. The proposed design patent practitioner bar would provide for a new designation of practitioner able to practice before the USPTO. This newly proposed designation allows individuals to be classified as design patent practitioners wherein […] Read Post →
Federal Circuit Confirms “Known-Technique” Rationale as an Indicator of a Motivation to Combine In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“KSR”) the U.S. Supreme Court criticized rigid application of the so-called “teaching, suggestion, or motivation” test (“the TSM test”) which, prior to KSR, had often been applied by courts when determining obviousness of patent claims. Under the TSM test, “a patent claim is […] Read Post →
Patent Owners Beware of Prior Adjudication Involving Related Patents When patent claims are construed and interpreted in an adjudicative proceeding, such as patent infringement litigation in federal court or in an adjudicative proceeding before the Patent Trial and Appeal Board (“PTAB”), a preclusive effect can arise which can affect the validity of claims of related patents. For example, on December 8, 2022, in Google […] Read Post →
Federal Circuit clarifies rules regarding patent term adjustment Last month, in Sawstop Holding LLC v. Vidal, the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed two decisions by the District Court of the Eastern District of Virginia regarding patent term adjustment (“PTA”) for two patents owned by Sawstop Holding LLC (“Sawstop”). In both decisions the District Court granted summary judgement in […] Read Post →
Federal Circuit reiterates holding regarding errors in prior art references On July 11, 2022, in LG Electronics Inc. v. ImmerVision, Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the United States Patent Trial and Appeal Board’s (“PTAB”) final written decisions in two inter partes reviews (“IPR”) wherein it was held that LG Electronics Inc. (“LG”) failed to show that the challenged […] Read Post →
Federal Circuit sheds light on corroboration standards for testimony in IPR proceedings On May 19, 2022, in Google LLC v. IPA Technologies Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) vacated and remanded the Patent Trial and Appeal Board’s (“PTAB”) decision that Google LLC (“Google”) had not shown relevant claims challenged in three inter partes reviews (“IPR”) to be unpatentable. The Federal Circuit vacated […] Read Post →
Federal Circuit Identifies Questions For Evaluating New Claims In IPR proceedings On March 24, 2022, in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision finding the claims of the US Patent No. 9,581,422 (“the ‘422 patent”) to be unpatentable as anticipated. The Federal Circuit also affirmed the decision […] Read Post →
Federal Circuit holds that applicant admitted prior art in a challenged patent may not form the basis of a ground to institute an inter partes review, but may be considered as evidence On February 2, 2022, in Qualcomm Incorporated v. Apple Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) dismissed Qualcomm’s appeal of two related inter partes review (“IPR”) decisions of the Patent Trial and Appeal Board (“PTAB”). The PTAB held several claims of a patent owned by Qualcomm to be unpatentable. […] Read Post →
Federal Circuit dismisses another appeal by Apple Inc. On November 10, 2021, in Apple Inc. v. Qualcomm Incorporated (Apple v. Qualcomm), the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) dismissed Apple Inc.’s (“Apple”) consolidated appeal from four decisions made by the Patent Trial and Appeal Board (“PTAB”). The PTAB held that claims of patents owned by Qualcomm Incorporated (“Qualcomm”) […] Read Post →
Federal Circuit clarifies the “teaches away” doctrine and the “substantial evidence” requirement when making an obviousness determination On July 22, 2021, in Chemours Company FC, LLC v. Daikin Industries, Ltd. (“Chemours v. Daikin”), the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed a decision made by the Patent Trial and Appeal Board (“PTAB”). In two inter partes reviews (“IPRs”) filed by Daikin Industries, Ltd. (“Daikin”), the PTAB held […] Read Post →
Dissent by Judge Newman highlights the expanding instability in the patent eligibility inquiry under § 101 On June 11, 2021, in Yu v. Apple Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed a decision by the Northern District of California dismissing a patent infringement case on the grounds that the asserted claims were invalid due to patent ineligibility under 35 U.S.C. § 101. A decision […] Read Post →
Federal Circuit reiterates the principle that when a § 103 rejection is based on a single prior art reference, the reference must be self-enabling in order to render the claimed invention obvious On April 16, 2021, in Raytheon Technologies Corp. v. General Electric Co., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed a decision by the Patent Trial and Appeal Board (“PTAB”) regarding unpatentability due to obviousness under 35 U.S.C. § 103. In its decision, the Federal Circuit made clear that when […] Read Post →
Federal Circuit provides additional insight into § 101 eligibility On February 8, 2021, in cxLoyalty, Inc. v. Maritz Holdings Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) dismissed-in-part, affirmed-in-part, and reversed-in-part a decision by the Patent Trial and Appeal Board (“PTAB”) dealing with covered business method (“CBM”) review and subject matter eligibility under 35 U.S.C. § 101. This is […] Read Post →
Federal Circuit affirms introduction of evidence in IPR petitioner’s reply briefs On November 25, 2020, in VidStream LLC v. Twitter, Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed an appeal from the Patent Trial and Appeal Board (“PTAB”) holding evidence introduced by the petitioner in a reply brief of an inter partes review (“IPR”) proceeding, after the petition had been […] Read Post →
Federal Circuit Affirms Intrinsic Evidence Trumps Extrinsic Evidence During Claim Construction On October 13, 2020, in Immunex Corp. v. Sanofi-Aventis U.S. LLC, Genzyme Corp., and Regeneron Pharmaceuticals, Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed-in-part and dismissed-in-part an appeal from the Patent Trial and Appeal Board (“PTAB”) holding that when it comes to claim construction, intrinsic evidence trumps extrinsic evidence. […] Read Post →