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Federal Circuit: New Invalidity Argument Presented to PTAB for the First Time on Remand from Appeal is Forfeit

The Federal Circuit reversed an obviousness determination from the Patent Trial and Appeal Board (PTAB) for relying on an argument raised by the petitioner for the first time on remand. In so doing, the court held that the...more

Focusing on the Language Used in the Claims, the Federal Circuit Vacates a District Court’s Construction of the Terms “Antibody”...

The Federal Circuit recently vacated a district court’s construction of the terms “antibody” and “antibody fragment.” The court’s constructions were not consistent with the claim language, and nothing in the specification or...more

Federal Circuit Vacates Summary Judgment of Non-Enablement Where the Only Alleged Non-Enabled Systems Did Not Practice the Claims

In a recent decision, the Federal Circuit vacated the district court’s summary judgment of non-enablement because the systems identified by patent challengers as non-enabled under § 112 were not covered by the claims. Because...more

Federal Circuit Reverses District Court Anticipation Decision Combining Two Prior Art References

The Federal Circuit reversed a decision from the District Court for the District of Delaware invalidating three patents on anticipation grounds, finding the district court improperly relied on disclosures from multiple...more

Federal Circuit Holds Ambiguity in License Terms Precludes Dismissal on the Pleadings

Although a valid license can provide a complete defense to patent infringement, the tangled web created when the defense is predicated on a sublicensee’s rights following bankruptcy of the sublicensor may preclude resolution...more

Federal Circuit: Appointment of PTAB Judges Violates the Constitution’s Appointments Clause

In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held that appointment of Administrative Patent Judges (APJs) by the Secretary of Commerce violates the Appointments Clause of the U.S. Constitution. The court then...more

Federal Circuit Remands CBM Review Decision, Asks PTAB to Explain Meaning of Part One of “Technological Invention” Exception

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

District Court Must Consider Joining Patent Owner Prior to Dismissal Where Licensee Lacks Substantial Rights to Bring Suit, but...

The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed...more

Applying New Halo Standard, the Federal Circuit Reverses Course and Affirms Finding of Willful Infringement

Upon remand by the Supreme Court following its decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), a panel of the Federal Circuit reconsidered its previous decision to vacate a jury’s...more

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