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Patents Appeals

Fish & Richardson

Federal Circuit Reverses Injunction That Barred Clinical Trials in Jazz v. Avadel

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The Federal Circuit recently considered the scope of a permanent injunction that prohibited a drug manufacturer from conducting certain clinical and regulatory activities in Jazz Pharmaceuticals, Inc. v. Avadel CNS...more

McDermott Will & Emery

X-Ray Vision: Court Sees Through Implicit Claim Construction

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous...more

WilmerHale

PTAB/USPTO Update - June 2025

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On May 27, the USPTO announced the completion of a critical upgrade to the agency’s core financial system, Momentum, to streamline maintenance of the fee payment systems as well as several internal functions....more

A&O Shearman

Federal Circuit Rejects PTAB’s Implicit And Incorrect Claim Construction Of “Between 1 And 10”

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On May 23, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged...more

Jones Day

Acting Director Releases First Decisions Under New Bifurcated Process

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On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more

Fish & Richardson

Navigating Change at the USPTO

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While it may seem like the only constant at the United States Patent and Trademark Office (USPTO) is change, that sentiment rings especially true in 2025. With a new presidential administration in the White House and numerous...more

McDermott Will & Emery

En Banc Federal Circuit Cools Damages Award Because of Improper Expert Testimony

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In an en banc decision in EcoFactor, Inc. v. Google LLC, the US Court of Appeals for the Federal Circuit concluded that the district court abused its discretion by admitting testimony from a damages expert that a lump-sum...more

K&L Gates LLP

Estoppel Estopped?

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The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending...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

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

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On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...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

White & Case LLP

Federal Circuit Clarifies Standard for Patent Conception in Ongoing CRISPR Dispute

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On May 12, 2025, the U.S. Court of Appeals for the Federal Circuit issued a long-awaited decision in Regents of the University of California v. Broad Institute (Nos. 22-1594, 22-1653) addressing priority for disputed...more

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

Federal Circuit in EcoFactor, Inc. v. Google LLC Probes the Limits for Gatekeeping Damages Testimony

Last week, in EcoFactor, Inc. v. Google LLC, the Federal Circuit issued its first en banc decision in a utility patent case in several years. The case involves the gatekeeping function of district courts vis-à-vis expert...more

Irwin IP LLP

CAFC Cleaves ‘Conception’ from ‘Reduction to Practice’: Conception Requires Neither Certainty Invention Will Work Nor Successful...

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Regents of the Univ. of California v. Broad Inst., Inc., No. 2022-1594, 2025 WL 1363125 (Fed. Cir. May 12, 2025) - On May 12, 2025, the U.S. Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeals...more

Fish & Richardson

En Banc Federal Circuit Grants Google a New Trial in EcoFactor Case

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On May 21, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, released its opinion in EcoFactor, Inc. v. Google, LLC. In an 8-2 decision, the court reversed a $20 million jury verdict, holding that the...more

Sheppard Mullin Richter & Hampton LLP

No Credit Where It Isn’t Due: The Importance of Preemption and Inventorship in Patent Law

Mr. Storms, an individual with significant experience with Bitcoin mining, is the founder and sole employee of BearBox LLC. Mr. McNamara and Dr. Cline co-founded Lancium in November 2017 with the intention of co-locating...more

Holland & Knight LLP

Section 101 Patent Eligibility Roundup: An Informative PTAB Decision, Squires Speaks

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The Patent Trial and Appeal Board designated a recent decision as informative. In the decision, Coke Morgan Stewart, Acting Director of the U.S. Patent and Trade Office (USPTO), ended the petitioner's challenges, noting that...more

Morrison & Foerster LLP

Discretionary Denials—Act II

On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs

Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more

Sheppard Mullin Richter & Hampton LLP

Is it Prior Art? Check the Provisional Application!

This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application’s priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e)....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: The Regents of the University of California v. The Broad Institute

The Regents of the University of California v. The Broad Institute, Inc., Appeal Nos. 2022-1594, -1653 (Fed. Cir. May 12, 2025) Must an inventor know their invention will work to demonstrate that they “conceived” of it? ...more

Holland & Knight LLP

Federal Circuit Grounds Aircraft Taxability Patent Under Section 101

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Aviation Capital Partners v. SH Advisors, the U.S. Court of Appeals for the Federal Circuit affirmed the ineligibility of claims directed to determining the taxability status of aircraft based on flight data. The panel upheld...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Narrow Pathway to Patent Eligibility in the Federal Circuit

The last 11 years have taught us much about the Federal Circuit; namely, that a majority of the judges simply do not seem to appreciate software. Given the statements that several have made in opinions, one might be able to...more

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

Miller Nash LLP

First Machine Learning Patent Ruling: Invalid or Just Obvious?

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On April 18, 2025, the Court of Appeals for the Federal Circuit (CAFC) ruled in Recentive Analytics Inc. v. Fox Corp. et al. that new uses for established machine learning do not make the claims patent-eligible....more

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