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...
Repleading Dismissed Claims Does Not Nullify Underlying Dismissal Order
KOSS CORPORATION v. BOSE CORPORATION
Before Hughes, Stoll, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.
Summary: Filing an amended complaint does not nullify a dismissal order that was not later vacated. Such an order merges into a final judgement for purposes of issue preclusion.
Responding to Preliminary Guidance Is the Core Purpose of the MTA Pilot Program
ZYXEL COMMUNICATIONS CORP. v. UNM RAINFOREST INNOVATIONS
Before Dyk, Prost, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: Because the PTAB’s MTA Pilot Program’s core purpose is to allow patent owners to address errors or deficiencies in motions to amend, the Board may exercise its discretion to allow reply briefing to correct such errors.
Estoppel Does Not Apply to Previously Issued Claims
SOFTVIEW LLC v. APPLE INC.
Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”).
Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new or amended claims in the PTO and does not apply to maintaining already issued claims.
A Private Sale Is Not Sufficient for Public Disclosure Under 35 USC 102(b)(2)(B)
SANHO CORP. V. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.
Before Dyk, Clevenger, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: An invention is not “publicly disclosed” under 35 USC 102(b)(2)(B) by the inventor’s private sale, even though a private sale may constitute an invalidating “public use” under 35 USC 102(a)(1).
Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference Proceedings
Speck v. Bates
Before Dyk, Bryson, and Stoll.
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.
Summary: Comparing pre-Section 135 bar date claims to amended post-bar date claims in an interference proceeding requires comparing the two sets of claims to determine if either set contains material limitations not found in the other—a “two-way test.”
Minority Owners of a Trademark Registrant, Who Neither Use nor Possess Ownership Rights in the Mark, Cannot Seek Cancellation of Third-Party Trademark Registrations Based on Likelihood of Confusion
LUCA MCDERMOTT CATENA GIFT TRUST v. FRUCTUOSO-HOBBS SL
Before Lourie, Reyna, and Chen.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.
Summary: Parties that own minority shares in the trademark registrant, but do not separately use or possess an ownership right in the trademark, are not entitled to seek cancellation of third-party registrations based on likelihood of confusion.
En Banc Federal Circuit Adopts a New Test for Design Patent Obviousness
LKQ Corp. v. GM Glob. Tech. Operations LLC [EN BANC OPINION]
Before Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board.
Summary: Sitting en banc, the Federal Circuit overruled the Rosen-Durling test for determining whether a design patent is invalid as obvious, instead adopting “a more flexible” approach
The Printed Matter Doctrine: Lost in Communication
IOENGINE, LLC v. Ingenico Inc.
Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Claim limitations requiring communications to be “encrypted” or to deliver “program code” were not subject to the printed matter doctrine.
Routine Optimization of Result-Effective Variable Can Bridge Gaps in Prior Art
PFIZER INC. v. SANOFI PASTEUR INC.
Before Lourie, Bryson, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: Evidence that a claimed parameter is recognized as a result-effective variable can overcome the lack of explicit disclosure of the exact parameter in the prior art.
Being Known Is Not Enough
VIRTEK VISION INTERNATIONAL ULC, v. ASSEMBLY GUIDANCE SYSTEMS, INC., DBA ALIGNED VISION
Before Moore, Hughes, and Stark. Appeal from the Patent Trial and Appeal Board (“Board”).
Summary: Merely showing that prior art elements were known to a person skilled in the art without providing a reason to combine the references does not prove obviousness.
PTAB Need Not Address Underdeveloped Arguments in IPR Petitions
NETFLIX, INC. V. DIVX, LLC
Before Dyk, Linn, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: The PTAB did not abuse its discretion by declining to address arguments that an IPR petitioner failed to clearly raise in its petitions.
Funding Strategies in the Generative AI World – Why Patents Should Still Matter to Investors: A Conversation with Technology Disruptor and CEO Linda Bernardi
In this episode of the Knobbe IP+ podcast, Knobbe Martens partner Mauricio A. Uribe speaks with author, technology disruptor, strategist and CEO Linda Bernardi on the role of patent strategies...
Consider the Relevant Technology Carefully Before Claiming Ranges in Patent Applications
RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A
Before Chen, Stoll, and Cunningham. Appeal from the Patent Trial and Appeal Board.
Summary: Claimed ranges can be narrower than alternative, broader ranges disclosed in the specification if one of ordinary skill in the art can adequately determine that the broader range does not result in a different invention than the narrower range.
Federal Circuit Instructs PTAB How to Apply Public Accessibility Standard
WEBER, INC. v. PROVISUR TECHNOLOGIES, INC.
Before Reyna, Hughes, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: Copyright notices in product manuals, which prohibited their reproduction and transfer, did not remove the manuals from the prior art.
Current Congressional Attempts at Patent Reform
In recent years, Congress has considered potential new laws for patent reform, typically changes to the system supported by patent owners. Two main areas of focus are “Section 101” and the “PTAB.” Below is a summary of two such efforts currently being considered by Congress.
Prosecution History May Support a Motivation to Combine
Elekta Limited v. Zap Surgical Systems, Inc.
Before: Reyna, Stoll, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: Patentee’s failure during prosecution to distinguish relevant art provided support for motivation to combine.
IPR Decision Based on a Barely Mentioned Typo Violated the APA Notice Requirement
APPLE INC. v. COREPHOTONICS, LTD.
Before Stoll, Linn, and Stark. Appeal from the Patent Trial and Appeal Board.
Summary: An IPR final written decision based on a party’s brief mention of an error in an expert declaration did not satisfy the notice requirements of the APA, where neither party suggested the error was material or dispositive.