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In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how to appropriately apply that standard.
Continue Reading PTAB Plays Wrong Tune On Whether Reference is Analogous Art

In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word “textile” in the preamble of both patents was not limiting (the term was limiting in one of the patents), the court concluded that this error did not affect the PTAB’s conclusions that all challenged claims were obvious.
Continue Reading Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting

In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and remanded the matter to the Board for further review.
Continue Reading Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility of a journal article whose publication date is close to the challenged patent’s critical date.
Continue Reading Raiders of the Lost Art

In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit explained that “Chamberlain was merely clarifying its earlier position” in response to One World’s reply brief and “not raising a new issue.” The Court, nevertheless, affirmed the Board’s decision canceling the challenged claims as anticipated by the prior art, noting that substantial evidence supported the finding.
Continue Reading Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so boldly tried to persuade the Board and the court otherwise. A $4.3 million willful infringement judgment will lead even the biggest of corporations to give it a try.
Continue Reading Come on, Board, Finish What You Started

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In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019), the Federal Circuit vacated the Patent Trial and Appeal Board’s decision that a claim was invalid as obvious.  The claim had previously been in front of the Federal Circuit in an appeal in which Federal Circuit found insufficient record support for the Board’s conclusion that the claim was obvious and that there would have been a motivation to combine relevant prior art references.  In this appeal, the Federal Circuit determined that the only additional evidence that the Board cited on remand to support the conclusion that there would have been a motivation to combine the relevant prior art references was not part of the record before the Board. 
Continue Reading Federal Circuit Vacates Board Obvious Decision Relying Upon Reference

Neptune Generics v. Eli Lilly & Company, Case No. 2018-1257, 2018-1258 (Fed. Cir. April, 2019), concerns an Eli Lilly & Co. patent protecting method of administering folic acid and a methylmalonic acid (MMA) lowering agent, e.g., vitamin B12. Specifically, the method concerns the administration of these products before administering pemetrexed disodium, an anti-folate chemotherapeutic, to reduce toxic effects of the anti-folate.
Continue Reading Section 101 Challenges are Out of Bounds in IPR Appeals

PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a proper primary reference for a design patent obviousness challenge. 
Continue Reading PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR to invalidate patent claims on the basis of obviousness, determining that the Board did not violate the Administrative Procedure Act (APA) by describing the motivation to combine the teachings of the prior art in different language than that used in the petition.  Additionally, the court affirmed the Board’s claim construction as reasonable and found that subjecting a pre-AIA patent to inter partes review was constitutional when the patent issued after the passage of the AIA. 
Continue Reading Federal Circuit Affirms Obviousness Decision by Board, No Violation