McDermott Will & Emery
Subscribe to McDermott Will & Emery's PostsReprints Do Not Change Earlier Publication Date
By McDermott Will & Emery on Dec 10, 2020
Posted In Patents
Addressing the entirety of the evidence standard, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board finding that responsive evidence can be properly considered to demonstrate the public availability of a reference relied upon in an inter partes review (IPR) petition. VidStream LLC v. Twitter, Inc., Case Nos....
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Federal Circuit Will Not Second-Guess IPR Institution Denials
By McDermott Will & Emery on Nov 11, 2020
Posted In America Invents Act, Patents
In a series of non-precedential orders, the US Court of Appeals for the Federal Circuit reiterated that it lacks jurisdiction to hear appeals on whether the Patent Trial and Appeal Board properly decided to deny inter partes review (IPR) petitions based on parallel district court litigation. Cisco Systems Inc. v. Ramot at Tel Aviv University,...
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PTO Seeks Comments on Proposed Rulemaking for Denying Patent Reviews
By McDermott Will & Emery on Oct 29, 2020
Posted In America Invents Act, Patents
The US Patent and Trademark Office (PTO) requested public comments on considerations for instituting trials under the Leahy-Smith America Invents Act (AIA). Comments are due by November 19, 2020. Patent practitioners have grown accustomed to reviewing the PTO Patent Trial and Appeal Board (Board) administrative guide, precedential or informative opinions, and other published filings and...
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One Claim Construction Error Is Enough to Trigger New Trial on Infringement
By McDermott Will & Emery on Oct 8, 2020
Posted In Patents, Technology
The US Court of Appeals for the Federal Circuit re-affirmed that incorrect construction of even a single claim element can be grounds for a new trial on infringement. Network-1 Technologies, Inc. v. Hewlett-Packard Company, Case Nos. 18-2338, -2339, -2395, -2396 (Fed. Cir. Sept. 24, 2020) (Prost, C.J.). Network-1 Technologies sued Hewlett-Packard (HP) for patent infringement....
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No Refunds: Cancellation of Patent Claims in IPR Isn’t a Taking
By McDermott Will & Emery on Sep 3, 2020
Posted In America Invents Act
The US Court of Appeals for the Federal Circuit found that cancellation of a patent in an inter partes review (IPR) proceeding is not a taking and does not grant the patentee any compensable claim against the United States. Christy, Inc. v. United States, Case No. 19-1738 (Fed. Cir. Aug. 24, 2020) (Hughes, J.). After Christy...
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Check Step One: It’s Not Ova until the Court Compares Claims
By McDermott Will & Emery on Aug 13, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s decision finding a patent directed to a method of sorting particles using flow cytometry technology ineligible under 35 U.S.C. § 101. The Federal Circuit also vacated the district court’s conclusion that the patent owner was precluded from asserting certain patents based on...
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Joined Parties Have Rights Too
By McDermott Will & Emery on Jul 22, 2020
Posted In America Invents Act, Patents
In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies to the entirety of the proceedings and includes the right of appeal. Fitbit, Inc. v. Valencell, Inc.,...
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The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious
By McDermott Will & Emery on May 14, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103. Uber Techs., Inc. v. X One, Inc., Case No. 19-1164 (Fed. Cir. May 5, 2020) (Prost, CJ). X One sued Uber Technologies asserting a patent...
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Patent’s Explicit Description of Claimed Advantages Defeats § 101 Challenge
By McDermott Will & Emery on Apr 30, 2020
Posted In Patents
Reversing a district court’s motion to dismiss, the US Court of Appeals for the Federal Circuit found patent claims directed to cardiac monitoring devices patent eligible under 35 USC § 101 because the claims were directed to a technical improvement to the function of such devices. CardioNet, LLC v. InfoBionic, Inc., Case No. 19-1149 (Fed....
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Exercise of Institution Discretion During Parallel AIA and District Court Challenges
By McDermott Will & Emery on Apr 15, 2020
Posted In Patents
The Patent and Trial Appeal Board (PTAB) Precedential Opinion Panel (POP) refused to revisit an earlier PTAB panel decision, reiterating that it remains within the discretion of a PTAB panel to deny institution on a patent challenge because of a pending trial in federal district court. Sand Revolution II, LLC v. Continental Intermodal Group –...
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