News & Analysis as of

Intellectual Property Protection Claim Construction United States Patent and Trademark Office

Sheppard Mullin Richter & Hampton LLP

Lexicography: Clear And Unequivocal

This Federal Circuit opinion analyzes lexicography in the context of claim construction. Alnylam Pharmaceuticals owns U.S. Patent Nos. 11,246,933 (parent) and 11,382,979 (child). These patents relate to biodegradable...more

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

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A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

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In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more

Baker Botts L.L.P.

First Quarter 2025 Federal Circuit Law Snapshot

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Vacates Claim Construction But Upholds PTAB’s Determination of Obviousness and Motivation to...

In this edition of The Precedent, we outline the Federal Circuit's decision in HD Silicon Solutions LLC v. Microchip Technology Inc. In HD Silicon Solutions LLC, the Federal Circuit addressed an appeal from the USPTO Patent...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Anticipation Analysis for Product-By-Process Claims

In Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. Mar. 13, 2025), the Federal Circuit upheld the Patent Trial and Appeal Board’s decision holding that U.S. Patent No. 9,803,176 (“the ’176 patent”) was not inherently...more

Jones Day

Federal Circuit Rules That Order Of Steps Sometimes Does Matter

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Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Knobbe Martens

Every Word Counts: Specification Naming Conventions Can Limit Claim Scope

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A patent’s specification established a naming convention that applied to terms in the patent’s claims. Microchip Technology filed an IPR, arguing all claims of HD Silicon Solutions’ patent were invalid. The challenged patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

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The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...more

Mintz - Intellectual Property Viewpoints

Avoiding the Provisional Application Filing Pitfall of Narrowed Claim Interpretation

Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent and Trademark Office (USPTO) filing...more

Baker Botts L.L.P.

Intellectual Property Report January 2025

Baker Botts L.L.P. on

In an era of content creation, social media influencers are tasked with the creative job of building a personal brand to influence the general public’s purchasing decisions and lifestyle choices. Creating a brand identity...more

Erise IP

Eye on IPRs: November 2024: USPTO Director to Step Down, Did Fed. Circuit DISH Asks Full Fed. Cir. Panel to Reconsider Vacating...

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Director Vidal to Step Down - On November 12, Under Secretary of...more

Alston & Bird

Patent Case Summaries | Week Ending September 20, 2024

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Vascular Solutions LLC, et al. v. Medtronic, Inc., et al., No. 2024-1398 (Fed. Cir. (D. Minn.) Sept. 16, 2024). Opinion by Mazzant (sitting by designation), joined by Moore and Prost....more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

McDermott Will & Emery

Patent Thicket Avoidance: PTO Proposes Changes to Terminal Disclaimer Practice

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On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – May 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Requester Side Benchmarks for Successful Reexamination Requests

Takeaways: -A requester can have a voice in ex parte reexamination prosecution. - Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument. The...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

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