Identical Inventor Required to Exclude Prior Art
MERCK SERONO S.A. v. HOPEWELL PHARMA VENTURES, INC. Before Hughes, Linn, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: An earlier reference is available as prior art...
Director Discretion: A Sotera Stipulation Does Not Mandate Institution
In Re MOTOROLA SOLUTIONS, INC. Before Dyk, Linn, and Cunningham Summary: The PTO Director has unreviewable discretion to deny institution of IPR proceedings in view of parallel proceedings, even when...
Nothing Unusual With Recusal Refusal
Centripetal Networks, LLC, v. Palo Alto Networks, Inc. Before Moore, Hughes, and Cunningham. Appeal from the Patent Trial and Appeal Board. Summary: Despite affirming the denial of Centripetal’s recusal motion...
Derivation ≠ Interference: First to File Keeps Rights if Conception Was Independent
GLOBAL HEALTH SOLUTIONS LLC v. SELNER Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit affirmed the Board’s rejection...
No Shenanigans: IPRs and Interference Estoppel
IGT v. ZYNGA INC. Before Prost, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board (PTAB). Summary: Interference estoppel does not apply when the interference was terminated due...
Applicant Admitted Prior Art Can (Sometimes) Show Obviousness
SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. Before Lourie, Dyk, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. Summary:...
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...
