The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more
In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
Key Points -
On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.”
Under...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
10/17/2019
/ America Invents Act ,
Claim Construction ,
Claim Limitations ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Section 101 ,
Section 103 ,
Technology
On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent...more
9/24/2018
/ Appeals ,
CRISPR ,
Interference Claims ,
Life Sciences ,
Nonobvious ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard ,
University of California
FEDERAL CIRCUIT CASES -
Federal Circuit Reverses Summary Judgment of Noninfringement Under § 271(e)(1) for Consideration of Certain Post-FDA-Submission Activities, But Expresses Skepticism About Infringement...more
FEDERAL CIRCUIT CASES -
Federal Circuit Declines to Extend Patent Exhaustion Doctrine -
In a February 10, 2015 decision, the Federal Circuit reversed a grant of summary judgment of non-infringement under the...more
2/16/2015
/ Covered Business Method Patents ,
Discovery ,
Innovation Act ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Mobile Devices ,
New York Times ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patents
Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure -
On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more
10/6/2014
/ Expert Testimony ,
Inequitable Conduct ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Joinder ,
Microsoft ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Target