News & Analysis as of

Patent Trial and Appeal Board Inventors Claim Construction

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

A&O Shearman on

On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Knobbe Martens

Reissue Applications Are Bound by the Scope of the Claims as Written, Not as Intended

Knobbe Martens on

IN RE KOSTIC - Before Stoll, Clevenger, and Cunningham. Appeal from the Patent Trial and Appeal Board. When considering whether a reissue claim broadens the scope of the original patent, the PTAB determines the actual scope...more

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

Broadening on Reissue is Based on the Scope of the Language of the Claims, Not the Original Intention of the Applicant

Takeaways: - Claim construction for determining whether reissue claims are improperly broadened is based on fundamental claim construction cannons and not applicant intentions. - Patent Owners should check patented claims...more

McDermott Will & Emery

Clickbait: Actual Scope (Not Intended Scope) Determines Broadening Reissue Analysis

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s rejection of a proposed reissue claim for being broader than the original claim, denying the inventors’ argument that the analysis...more

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”

This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024

Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024) In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

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: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more

McDermott Will & Emery

Obviously Prima Facie Case Overcome by Secondary Considerations

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, holding that the Board did not err in finding certain challenged claims nonobvious and not unpatentable based on a showing of several...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023

Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023) In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit...more

WilmerHale

Federal Circuit Patent Watch: IPR petitioner not required to anticipate and raise analogous art arguments in petition

WilmerHale on

Precedential Federal Circuit Opinions - HIP, INC. v. HORMEL FOODS CORPORATION (2022-1696, 5/2/23) (Lourie, Clevenger, and Taranto) Lourie, J. The Court reversed the district court’s decision regarding joint...more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #3

Hologic, Inc. v. Minerva Surgical, Inc., Appeal Nos. 2019-2054, -2081 (Fed. Cir. Aug. 11, 2022) - Our Case of the Week follows the Hologic saga as it returns to the Federal Circuit on remand from the Supreme Court’s...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

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

PTAB Strategies and Insights - May 2021

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

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. Below we provide our usual weekly...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Droplets, Inc. v. E*TRADE Bank., Appeal No. 2016-2504 (Fed. Cir. 2018)?- In an appeal from an inter partes review, the Federal Circuit affirmed a decision by the PTAB invalidating a patent...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

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

Knobbe Martens

Federal Circuit Review | October 2016

Knobbe Martens on

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

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