News & Analysis as of

Patent Trial and Appeal Board Expert Testimony Appeals

A&O Shearman

UPC Court of Appeal clarifies approach to claim construction

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Insulet v EOFlow UPC_CoA_768/2024 (Ord_69078/2024) The Unified Patent Court (UPC) Court of Appeal has issued a significant decision that provides important guidance on the interpretation of patent claims in UPC...more

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

U.S. IP Update – June 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

Alston & Bird

Patent Case Summaries | Week Ending May 23, 2025

Alston & Bird on

EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. (W.D. Tex.) May 23, 2025). En banc opinion by Moore, joined by Lourie, Dyk, Prost, Taranto, Chen, Hughes, and Stoll. Opinion concurring in part and dissenting in part by...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: EcoFactor, Inc. v. Google LLC

EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. May 21, 2025) In its first en banc decision of the year, the Federal Circuit reversed a district court’s admission of expert testimony concerning damages,...more

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

Knobbe Martens on

SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

McDermott Will & Emery

Construing Unambiguous Claim Language and Qualifying Challenged Expert as POSITA

McDermott Will & Emery on

Addressing the issues of claim construction and the requisite expert qualifications to testify on obviousness and anticipation, the US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board decision...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

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

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

Kilpatrick on

Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

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

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more

McDermott Will & Emery

No Money, Mo’ Problems: Speculative Damages Award Cannot Stand

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit upheld a district court’s claim construction and jury instructions but reversed a premature judgment as a matter of law (JMOL) on obviousness and an imprecise damages award....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2023 #3

Cyntec Company, Ltd. v. Chilisin Electronics Corp., Appeal No. 2022-1873 (Fed. Cir. Oct. 16, 2023) In this week’s Case of the Week, the Federal Circuit reversed and remanded a California district court’s judgment as a...more

McDermott Will & Emery

Bad Connection: Claim Construction Argument without Explanation Given No Weight

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed...more

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

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

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Knobbe Martens

A Generic Motivation Is Still a Motivation

Knobbe Martens on

INTEL CORPORATION v. QUALCOMM INCORPORATED - Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A “generic” motivation to combine that has broad appeal or applicability is not...more

Sunstein LLP

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Sunstein LLP on

As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more

McDermott Will & Emery

Unsupported Expert Testimony Isn’t Enough to Establish Motivation to Combine

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit determined that a Patent Trial and Appeal Board (PTAB) finding regarding motivation to combine based only on conclusory expert testimony was not supported by substantial...more

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

PTAB Strategies and Insights - November 2019: The Board's Reliance on Expert's Conclusory Statements May Not Meet Substantial...

In a recent precedential decision, TQ Delta, LLC v. Cisco Systems, Inc., the Federal Circuit reversed a pair of USPTO inter partes review proceedings that invalidated all claims of two related U.S. patents because “the...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

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In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - July 2018 #2

PATENT CASE OF THE WEEK - Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Appeal Nos. 2016-2691, 2017-1875 (Fed. Cir. July 3, 2018) - The Court affirmed a jury verdict of patent infringement and vacated a...more

Knobbe Martens

Ericsson Inc. v. Intellectual Ventures I LLC.

Knobbe Martens on

Federal Circuit Summaries - Before Prost, Newman, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: An unsupported expert opinion does not constitute substantial evidence to contradict a prior art...more

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

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

Mintz - Intellectual Property Viewpoints

Establishing Obviousness: A Fundamental Case of Evidence Over Arguments

The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious. In doing so, the Federal...more

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