News & Analysis as of

Patent Prosecution Appeals Inter Partes Review (IPR) Proceeding

BCLP

Federal Circuit Clarifies Limits of Prosecution Disclaimer in Patent Families

BCLP on

In Maquet Cardiovascular LLC v. Abiomed Inc., 131 F.4th 1330 (Fed. Cir. 2025), the Federal Circuit addressed whether the prosecution history of one patent in a patent family can limit the scope of claims in a different patent...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2020 #2

PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more

Knobbe Martens

Arendi S.A.R.L. v. Google LLC

Knobbe Martens on

Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more

Patterson Belknap Webb & Tyler LLP

Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar

On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material. In addition, Judge Koeltl determined that post-issuance proceedings,...more

Jones Day

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

Jones Day on

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more

Fenwick & West LLP

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

Fenwick & West LLP on

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

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

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED...more

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