As the Patent Trial and Appeal Board and the Acting USPTO Director refocus challengers, and with them Patent Owners, towards reexamination from inter partes review proceedings, the need to understand the nuance of “new” in...more
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more
The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more
This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). Background - Cellect sued Samsung Electronics, Co. for infringement of four patents. Subsequently, Samsung...more
Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more
The Federal Circuit recently affirmed a United States Patent and Trademark Office (PTO) decision to invalidate four related patents on obviousness-type double patenting grounds (OTDP), holding that any analysis of OTDP for...more
The US Patent & Trademark Office (PTO) terminated a pending ex parte reexamination after finding that the challenger was estopped because the prior art references could have been raised in a prior inter partes review (IPR)....more
The US Court of Appeals for the Federal Circuit revived a petitioner’s validity challenge seeking ex parte review at the US Patent & Trademark Office (PTO), reversing a district court decision dismissing its complaint seeking...more
Alarm.com Inc. v. Hirshfeld, Appeal No. 2020-2102 (Fed. Cir. Feb. 24, 2022)- In an appeal from the U.S. District Court for the Eastern District of Virginia, the Federal Circuit addressed whether the ex parte reexamination...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
On September 29, in In re Vivint, Inc., the Federal Circuit clarified the interplay between petitions for inter partes review (IPR) and a subsequent request for ex parte reexamination. The court held that the USPTO abused its...more
In re: Vivint, Inc., Appeal No. 2020-1992 (Fed. Cir. Sept. 29, 2021) - In an appeal from the United States Patent Trial and Appeal Board, the Federal Circuit addressed whether a party may challenge the validity of an...more
Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more
Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The January 2019 spotlight article covers a recent Federal Constitutional Court (FCC) decision in...more
The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
The Supreme Court is taking another patent case, granting certiorari in WesternGeco v. Ion. A divided panel of the Circuit had ruled that the plaintiff was not entitled to lost profits as a result of the sale of components of...more
On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal...more
Acting as Lexicographers Saves Patent from Being Found Invalid - In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and...more
USPTO's Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose - In a nonprecedential opinion, the Federal Circuit vacated a decision by the Board and remanded the case on appeal from...more
Federal Circuit Revives Possibility of Permanent Injunction in Apple-Samsung Patent Dispute - In Apple Inc. v. Samsung Electronics Co., Appeal No. 2014-1802, the Federal Circuit reversed for abuse of discretion the...more
Addressing the issue of contempt for violation of a non-final injunction, a divided U.S. Court of Appeals for the Federal Circuit declined to rehear en banc a panel decision that vacated a civil contempt holding for violation...more