An Eye Toward Prosecution History
EYE THERAPIES, LLC v. SLAYBACK PHARMA LLC Before Taranto, Stoll and Scarsi (sitting by designation) Summary: The patent’s prosecution history required a restrictive interpretation of the term “consisting essentially of.”...
No Injury, No Appeal: Patent Owners Must Show Actual Injury for Article III Standing
DOLBY LABORATORIES LICENSING CORPORATION v. UNIFIED PATENTS, LLC Before Moore, Clevenger and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A patent owner lacks Article III standing to...
Finding Common Ground? — Federal Circuit Clarifies IPR Estoppel
INGENICO INC. v. IOENGINE, LLC Before Dyk, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware. Summary: IPR estoppel does not preclude reliance on...
Speculative Plans Are Insufficient to Establish Standing in PTAB Appeals
INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, INC. Before Moore, Hughes, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: Speculative plans for potentially infringing activity are insufficient to...
Reissue Applications Are Bound by the Scope of the Claims as Written, Not as Intended
IN RE KOSTIC Before Stoll, Clevenger, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: When considering whether a reissue claim broadens the scope of the original patent,...
Keeping PACE With CRISPR
AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Obviousness does not require all claimed limitations to be expressly...
No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference
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. Summary: The Board did not...
Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink
CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC Before Lourie, Taranto, and Stark. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: A utility patent may...
Zoned Out: The Zone of Natural Expansion Doctrine Can Only Be Used Defensively
DOLLAR FINANCIAL GROUP, INC. v. BRITTEX FINANCIAL, INC. [OPINION] Before Prost, Taranto, and Hughes. Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Summary: The...
Inaction Can Lead To Argument Forfeiture on Appeal
ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board Summary: A party in a PTAB proceeding forfeits the ability to challenge an...
Limits of Inherent Anticipation in Product-By-Process Claims
RESTEM, LLC v. JADI CELL, LLC Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Inherency in product-by-process claims requires the prior art process to...
Jepson Claim Preamble Requires Written Description Support for Conventional Aspects of the Invention
IN RE: XENCOR, INC. Before Hughes, Stark, and Schroeder (sitting by designation). Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board. Summary: To provide adequate written...
The Board Must Provide Reasoned Explanation When Discarding Material, Unrebutted Evidence
CQV CO., LTD. v. MERCK PATENT GMBH Before Cunningham, Chen, and Mayer. Appeal from the Patent Trial and Appeal Board. Summary: The Board erred by failing to explain why it discarded...
Where Method Claim Steps Are Connected by “And,” a Covered Method Must Perform Each Step
SIERRA WIRELESS, ULC V. SISVEL S.P.A. Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The Board erred by finding method-claim steps connected by “and” to...
Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof
KROY IP HOLDINGS, LLC v. GROUPON, INC. Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the District of Delaware. Summary: Because there are different burdens of proof...
Every Word Counts: Specification Naming Conventions Can Limit Claim Scope
HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. Before: Lourie, Stoll, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: A patent’s specification established a naming convention that applied...
The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents
APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC. Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office. Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning...
A Published Patent Application Is IPR Prior Art as of Its Filing Date
LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Lourie, Prost, and Stark Summary: In an IPR, a patent application is considered a “printed publication” as of the application’s filing...
Bound to Happen: Inherent Property Leaves No Question of Reasonable Expectation of Success
CYTIVA BIOPROCESS R&D AB V. JSR CORP. Before Prost, Taranto, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: A claim limitation merely reciting an inherent property or...
Platinum Cannot Stand on Speculation
PLATINUM OPTICS TECHNOLOGY INC., v. VIAVI SOLUTIONS INC.
Before Moore. Appeal from the Patent Trial and Appeal Board.
Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement or will likely lead to a patentee claiming infringement.
A Certification Mark May Be Famous for Any Reason and May Connote More Than the Product’s Place of Origin
BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT Before Lourie, Clevenger and Hughes. Appeal from the Trademark Trial and Appeal Board. Summary: Fame and likelihood of confusion analyses...
