In the latest installment of their monthly Law360 column covering recent noteworthy Federal Circuit decisions, Knobbe Martens partners Sean Murray and Jeremiah Helm discussed the court’s opinion on retroactivity in Implicit LLC v. Sonos Inc.
The case addressed Implicit’s attempt to retroactively correct patents that were previously invalidated during the inter partes review process. “The Federal Circuit ruled that, even though the retroactive correction theoretically should have changed the outcome of the IPRs, thereby saving Implicit’s patents from invalidation, Implicit had forfeited the right to rely on the correction,” Murray and Helm explain.
The authors note that the decision is interesting for several reasons, including that “[the Federal Circuit], which many perceive to have become more skeptical of patents, has given more latitude to a U.S. Patent and Trademark Office that has recently become increasingly pro-patent.” Murray and Helm also provide important takeaways for patent practitioners based on the decision, such as the risks of forfeiture when evidence is not provided to the court in a timely manner, which can outweigh even a “very clever” legal argument.
Read the full article here.
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