On Tuesday, January 22, 2019, the U.S. Supreme Court held in a unanimous decision that, even where the details of the invention are kept confidential, a commercial sale may place the invention “on sale” under the Leahy-Smith...more
1/24/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Teva Pharmaceuticals ,
Third-Party Relationships
Federal Circuit Summary -
Before Reyna, Wallach, and Taranto. Appeal from the Patent Trial and Appeal Board.
Summary: A party must file a cross-appeal when their argument requires modification of a decision. Under the...more
11/26/2018
/ Administrative Procedure Act ,
Appeals ,
Claim Construction ,
Cross-Appeals ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Validity ,
Patents ,
Reaffirmation ,
Standing ,
Time-Barred Claims
Federal Circuit Summaries -
Before Dyk, Wallach, and Taranto. Appeal from the United States District Court for the Western District of Washington.
Summary: Claims directed to improving computer security by using BIOS...more
Federal Circuit Summary -
Before Judges Reyna, Bryson, and Stoll. Appeals from the Patent Trial and Appeal Board and the United States District Court for the District of Delaware.
Summary: Non-prior art evidence may...more
10/17/2018
/ Appeals ,
Evidence ,
Multi-Party Litigation ,
Mylan Pharmaceuticals ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
POSITA ,
Prior Art ,
Reaffirmation ,
Sandoz ,
Teva Pharmaceuticals
Federal Circuit Summary -
Before Reyna, Wallach, and Hughes. Appeal from the United States District Court for the District of Nevada
Summary: District Courts have jurisdiction to hear APA challenges to the PTO’s denial...more
9/25/2018
/ Administrative Procedure Act ,
Appeals ,
Dismissals ,
MPEP ,
Patent Examinations ,
Petition for Rulemaking ,
Remand ,
Reversal ,
Right To Appeal ,
Subject Matter Jurisdiction ,
Time-Barred Claims ,
USPTO
Federal Circuit Summary -
Before Prost, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board.
Summary: The PTAB may initially accept an IPR petitioner’s identification of real-parties-in-interest, but...more
9/10/2018
/ Appeals ,
Burden of Persuasion ,
Burden-Shifting ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Rebuttable Presumptions ,
Remand ,
Software Patents ,
Time-Barred Claims ,
Vacated
Federal Circuit Summary -
Before Dyk, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: A two-dimensional drawing of a three-dimensional object may meet the enablement and definiteness...more
Federal Circuit Summary -
Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of Texas.
Summary: Where remand of post-reexamination claims that issued during the...more
8/9/2018
/ Abstract Ideas ,
Appeals ,
Claim Amendments ,
Declaratory Rulings ,
Determination on Remand ,
Inter Partes Reexamination ,
Judgment on the Pleadings ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Section 101
Federal Circuit Summary -
Before Prost, Moore and Reyna. Appeal from the District Court of Delaware.
Summary: A limitation in the specification should not be imported into a claim when there is no evidence that the...more
Federal Circuit Summaries -
Before Dyk, Clevenger, and Chen. Appeal from the United States District Court for the Northern District of California.
Summary: In order to rely on the entire market value rule to calculate...more
Federal Circuit Summaries -
Before Taranto, Plager, and Chen. Appeal from the Patent Trials and Appeals Board.
Summary: In determining whether materials distributed at meetings or conferences are reasonably accessible...more
Federal Circuit Summaries -
Before PROST, Wallach, and Taranto. Appeal from the Southern District of Indiana.
Summary: In determining whether a party’s actions were “exceptional” under Octane Fitness, the District...more
6/14/2018
/ Abuse of Discretion ,
Appeals ,
Attorney's Fees ,
Clear Error Standard ,
Dismissals ,
Exceptional Case ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Prevailing Party ,
Reaffirmation ,
Totality of Circumstances Test
Federal Circuit Summaries -
Before Reyna, Clevenger, and Wallach. Appeal from the United States District Court for the District of Colorado -
Summary: Even in a simple mechanical case, a narrow disclosure in the...more
Federal Circuit Summary -
Before Wallach, Chen, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: A party may not be time-barred from instituting an IPR despite having a business relationship with a...more
5/11/2018
/ § 315(b) ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Jury Trial ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Substantial Evidence Standard ,
Time-Barred Claims
Federal Circuit Summaries -
Before Newman, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: The USPTO has standing to intervene to defend its decision, even when the requestor has...more
Federal Circuit Summaries -
Before Newman, Hughes, and Stoll. Appeal from U.S. District Court for the Southern District of New York.
Summary: General disclosures in the specification and statements that describe the...more
Federal Circuit Summaries -
Before Taranto, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: Proceeding to trial despite a party’s violation of a discovery order...more
Federal Circuit Summaries -
Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s],...more
2/12/2018
/ Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Reversal
Federal Circuit Summaries -
Before Newman, O’Malley, and Reyna. Appeal from the United States District Court for the Southern District of New York.
Summary: A co-inventor did not transfer ownership interests in a...more
1/12/2018
/ Appeals ,
Assignment of Inventions ,
Dismissals ,
Employment Contract ,
Inventors ,
IP Assignment Agreements ,
Joinder ,
Joint Inventors ,
Patent Infringement ,
Patents ,
Quitclaim Deeds ,
Standing ,
Technology Sector ,
Vesting
The Federal Circuit affirmed the PTAB’s final written decision holding that claims directed to Novartis’s multiple sclerosis drug Gilenya were obvious in Novartis AG v. Torrent Pharmaceuticals. Ltd., No. 2016-1352 (Fed. Cir....more