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  • The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents
    06/04/2024

    On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id. 

  • Federal Circuit Finds Challenged Claims of Laser Projector Alignment Patent Not Unpatentable
    03/27/2024
    On March 27, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion (i) reversing the Patent Trial and Appeal Board’s (“Board”) finding that certain challenged claims of a patent directed to a method for aligning a laser projector with respect to a work surface are unpatentable and (ii) affirming the Board’s finding that certain other challenged claims of the patent are not unpatentable. Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., __ F.4th __ (Fed. Cir. Mar. 27, 2024).
    Categories : IPRsObviousness
  • Federal Circuit Affirms PTAB Decision Finding Unpatentable Challenged Claims Of Medical-Imaging Patent
    03/26/2024

    On February 20, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a medical-imaging patent directed to using a headset to view three-dimensional images of a patient. D3D Technologies, Inc. v. Microsoft Corp., __ F.4th __ (Fed. Cir. Feb. 20, 2024).

  • Federal Circuit Vacates And Remands PTAB Decision Regarding Patents For Adult Incontinence Diapers
    03/26/2024

    On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.

  • Federal Circuit Affirms Findings Of The International Trade Commission With Respect To Media Device Patent
     
    02/13/2024


    On January 19, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final determination of the International Trade Commission (“ITC”), which found that: (i) intervenor Universal Electronics, Inc. (“Universal”) had ownership rights to assert the ’196 patent in the investigation, (ii) Universal satisfied the domestic industry requirement of 19 U.S.C. § 1337 (Section 337) and (iii) appellant Roku failed to establish the ’196 patent was obvious over prior art.

  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
    01/31/2024

    On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend the Claims
     
    01/23/2024
    On January 18, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to a 3D pointing device for outputting yaw, pitch, and roll angles in a 3D reference frame and denying the patent owner’s motion to amend its claims.  CyWee Group Ltd. v. ZTE (USA), Inc., __ F.4th __ (Fed. Cir. Jan. 18, 2024).
    Categories : ObviousnessMotion to Amend
  • Federal Circuit Reverses District Court Ruling As To Nonobviousness And Damages
     
    11/01/2023

    On October 16, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion that (i) reversed the District Court for the Northern District of California’s pre-verdict judgment as a matter of law (JMOL) of nonobviousness, (ii) affirmed the district court’s decision to deny defendant’s pre-verdict and post-trial motions for JMOL regarding noninfringement, (iii) reversed the district court’s denial of defendant’s pre and post-trial motions to exclude the testimony of patent owner’s damages expert, (iv) vacated the lost profits award, and (v) remanded the case for further consistent proceedings.  Cyntec Co. v. Chilisin Electronics Corp., No. 2022-1873, --F.4th.--, 2023 WL 6798376 (Fed. Cir. Oct. 16, 2023).
  • The Federal Circuit Reminds The PTAB Of The Meaning Of “A”
     
    11/01/2023

    On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Tells PTAB To Base Its Decision On Grounds The Parties Raise
     
    10/11/2023

    On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB On Motivation To Combine And Reasonable Expectation Of Success
     
    10/11/2023

    On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Unpatentability Finding Of Medical Alarm Patent
     
    10/10/2023

    On September 28, 2023, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the decision of the Patent Trial and Appeal Board finding unpatentable the challenged claims of a patent directed to an adaptive alarm system, used in combination with pulse oximetry sensors, for medical applications. Masimo Corp. v. Sotera Wireless, Inc., F.4th (Fed. Cir. Sept. 28, 2023).
    Category : Obviousness
  • Federal Circuit Vacates PTAB’s Final Written Decisions Because The Board Erred In Its Obviousness Analysis
     
    08/01/2023

    Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.
    Categories : IPRsObviousnessPTAB
  • The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
     
    06/13/2023

    On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms Unpatentability Of Gaming Machine Patent
     
    06/01/2023

    On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Rejects Anticipation Based On Misapplication Of “At Once Envisage” Framework
     
    05/09/2023

    On April 12, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:19-cv-00474-KAJ, Judge Kent A. Jordan, invalidating asserted claims of plaintiff’s ’589 patent as obvious. UCB Inc. v. Actavis Laboratories UT Inc., __ F.3d __ (Fed. Cir. Apr. 12, 2023). In its order affirming invalidity, the CAFC affirmed the district court’s holding of invalidity for obviousness but found legal error in the district court’s anticipation holding because it misapplied the CAFC’s decision in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
    Categories : ObviousnessPrior Art
  • Federal Circuit Affirms PTAB Final Written Decision Finding Fluorescence Detection Patent Not Unpatentable as Obvious
     
    05/09/2023

    On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“Board”) finding that Leica Microsystems, Inc. (“Leica”) failed to show that the claims of a patent directed to a fluorescence detection system were unpatentable as obvious. Leica Microsystems, Inc. v. Regents of the University of Michigan, Appeal No. 22-1445 (Fed. Cir. Apr. 24, 2023).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination
     
    03/24/2023

    On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”
  • Federal Circuit Vacates PTAB Determination That Claims Were Not Obvious Because Of Flawed Motivation-To-Combine Analysis
     
    05/17/2022

    On April 29, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded the final written decision of the Patent Trial and Appeal Board (“PTAB”), which found that the Petitioner, Auris Health, Inc. (“Auris”), had failed to demonstrate that the challenged claims were unpatentable as obvious based on evidence of general skepticism about the field of invention.  Auris Health, Inc. v. Intuitive Surgical Operations, __ F.4th __ (Fed. Cir. April 29, 2022).
    Categories : IPRsObviousness
  • Federal Circuit Reverses PTAB Finding Of Obviousness
     
    11/09/2021

    On November 04, 2021, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB’s) holding that a patent claim was obvious, rejecting both the PTAB’s finding that the prior art disclosed all claim limitations and the PTAB’s finding that the combination of references would result in a reasonable expectation of success. University of Strathclyde v. Clear-Vu Lighting LLC, No. 2020-2243 (Fed. Cir. Nov. 04, 2021).
  • Federal Circuit Affirms PTAB’s Non-Obviousness Decision Due To Lack Of Motivation To Combine
     
    04/20/2021

    On April 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), finding that the claims of the challenged patent had not been proved obvious because the petition for inter partes review (IPR) failed to show that there would have been a motivation to combine the two allegedly invalidating prior art references.  Apple Inc. v. INVT SPE LLC, —F.3d — (Fed. Cir. Apr. 13, 2021).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Substitution-Based Obviousness Decision Related to Refrigerant Mixture
     
    03/02/2021

    On February 24, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Daikin Indus., LTD v. The Chemours Co. FC, LLC, __ F.3d __ (Fed. Cir. Feb. 24, 2021).  The CAFC found that the petition for inter partes review (IPR) properly set forth a substitution-based theory of obviousness and that the PTAB’s substitution analysis was supported by substantial evidence.
     
    Categories : IPRsObviousnessPTAB
  • Northern District Of Illinois Uses Collateral Estoppel To Find Patents Invalid Based On PTAB’s Unpatentability Rulings On Similar Patents
     
    10/20/2020

    On October 8, 2020, Judge Andrea R. Wood of the United States District Court for the Northern District of Illinois denied plaintiff Think Product, Inc.’s motion to reconsider a finding of patent invalidity.  Think Products, Inc. v. Acco Brands Corp. and Acco Brands, USA LLC, No. 18-cv-07506 (N.D. Ill. Oct. 8, 2020).  The Court had previously granted defendants Acco Brands Corporation’s and Acco Brands, USA LLC’s motion for summary judgment invalidating two patents based on collateral estoppel arising from rulings by the Patent Trial and Appeal Board (“PTAB”) invalidating for obviousness two similar patents.
     
  • Federal Circuit Affirms PTAB’s Obviousness Decision And Finds Challenge To “Real Party In Interest” Requirement Non-Appealable
     
    05/27/2020

    On May 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and finding non-appealable the PTAB’s decision to institute inter partes review (IPR) notwithstanding a challenge that Petitioner-Appellee failed to identify “all real parties in interest.”  ESIP Series 2, LLC v. Puzhen Life USA, LLC, __ F.3d __ (Fed. Cir. May 19, 2020).  The CAFC found that substantial evidence supported the PTAB’s finding that a skilled artisan would have been motivated to combine the teachings of each prior art reference to arrive at the claimed invention, and that Patent Owner-Appellant’s challenge to the PTAB’s “real parties in interest” determination was not appealable.
     
  • Federal Circuit Affirms PTAB’s Refusal To Import Limitation, And Finding Of Obviousness
     
    05/21/2020

    On May 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Lone Star Silicon Innovations LLC v. Iancu, __ F.3d __ (Fed. Cir. May 14, 2020).  In its affirmance, the CAFC found that the PTAB had correctly construed a disputed claim term and that substantial evidence supported the PTAB’s finding of obviousness.
     
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Finding That General Knowledge Can Supply Missing Claim Limitations In Obviousness Analysis
     
    02/05/2020

    On January 30, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Koninklijke Philips NV v. Google LLC, __ F.3d __ (Fed. Cir. Jan. 30, 2020).  While the CAFC ruled that the PTAB lacked the discretion to institute review inter partes review (IPR) based on grounds not presented in an IPR petition, it affirmed the PTAB’s obviousness decision based on a ground that was contained in appellee’s petition.
     
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Rejects A Wide Scope Inquiry Into Options Available At The Time Of Invention In An Obvious-To-Try Analysis
     
    01/14/2020

    On January 6, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board (PTAB) judgment in an inter partes examination (IPR) of a U.S. patent.  Google LLC v. Koninklijke Philips N.V., Appeal No. 2019-1234 (Fed. Cir. Jan. 6, 2020) (nonprecedential).  The CAFC applied the obvious-to-try inquiry and found that the claims were obvious.
    Categories : ObviousnessPTAB
  • Federal Circuit Affirms Obviousness Of Patents Covering Extended-Release Hydrocodone Formulations
     
    01/07/2020

    On December 27, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of invalidity on obviousness grounds of the United States District Court for the District of Delaware.  Persion Pharms. LLC v. Alvogen Malta Operations Ltd., __ F.3d __ (Fed. Cir. Dec. 27, 2019).  The CAFC found no clear error in the district court’s reliance on inherency in its analysis or in its factual findings.
    Categories : ANDAObviousness
  • Federal Circuit Considers Analogous Art In Obviousness Analysis
     
    11/19/2019

    On November 8, 2019, the Court of Appeals for the Federal Circuit (CAFC) vacated the judgment of the Patent Trial and Appeal Board (PTAB) reversing the patent examiner’s rejection of new claims presented by Firepass Corp. (Firepass) in an inter partes reexamination of a U.S. patent.  Airbus S.A.S. v. Firepass Corp., __ F.3d __, (Fed. Cir. Nov. 8, 2019).  The CAFC found that the PTAB erred in its analysis of analogous art.
     
    Category : Obviousness
  • Federal Circuit Vacates PTAB’s Obviousness Finding For Failure To Consider Evidence Of Copying
     
    11/05/2019

    On October 30, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Liqwd, Inc.’s patent claims are unpatentable as obvious.  Liqwd, Inc. v. L'Oreal USA, Inc., __ F.3d __ (Fed. Cir. Oct. 30, 2019).  The CAFC ruled that the PTAB erred in concluding that evidence of copying the patented invention was legally irrelevant.
     
    Categories : ObviousnessPTAB