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The Best Option Is Obviously Not the Only Option

Following a jury verdict finding infringement of two patents and awarding $2.2 billion, the Patent Trial & Appeal Board issued a final written decision finding all claims in one of the asserted patents invalid. The Board...more

Sliced and Diced: PTAB Decision Remanded for Further Analysis

In an appeal from a Patent Trial & Appeal Board final written decision, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision to include certain evidence first presented in the petitioner’s Reply but...more

Not a Well-Crafted Housing: Product-by-Process Claim Element Isn’t Limiting

The US Court of Appeals for the Federal Circuit affirmed a ruling that certain claims reciting a “housing . . . being cast in one piece” should be construed as a product-by-process claim element and affirmed the subsequent...more

Hypothetical Device Doesn’t Meet Domestic Industry Requirement

In a consolidated appeal from the International Trade Commission (Commission) and two inter partes review (IPR) proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit...more

IPR Petition Cannot Be Based on Applicant Admitted Prior Art

Addressing the type of prior art that may form the basis of an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit vacated an unpatentability finding based on “applicant admitted prior art”...more

Analogous Art Includes Reference a Skilled Artisan Would Reasonably Consult

Addressing the standard for determining whether a prior art reference constitutes analogous art for purposes of an obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial and...more

Unrebutted Declaration Supports Public Availability of Prior Art

Addressing the evidentiary showing necessary to prove whether a foreign publication is publicly available, the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) did not abuse its...more

Sharp Turnaround on Applicability of § 112, ¶6 Analysis

Addressing the applicability of 35 USC § 112, ¶6 to the term “mechanical control assembly,” the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) gave undue weight to the patent’s...more

Narrow Claim Construction Is Out of Sync with Broad Intrinsic Evidence

Addressing the proper construction for two claim terms construed by the Patent Trial and Appeal Board (PTAB) as part of related inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit affirmed...more

Dropping Appeal on the Eve of Oral Argument Leads to Preclusion of Another

Addressing the applicability of issue preclusion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a patent owner’s arguments on appeal were precluded based on similar...more

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