The equitable doctrine of collateral estoppel protects a party from having to re-litigate an issue that has already been fully and fairly adjudicated. In Nestlé USA, Inc. v. Steuben Foods, Inc. the Federal Circuit said that application of collateral estoppel is not limited to construing only identical patent claims; but instead, it extends to terms … Continue Reading
Update: The Federal Circuit’s decision in this case was vacated as moot, on the basis that the challenged claims had been canceled in a separate IPR proceeding. PNC Bank Nat’l Assoc. v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018). A patent that is merely incidental to a financial activity is not sufficient to render that … Continue Reading
Notice of grounds for unpatentability in one proceeding does not provide notice in a second, related proceeding, even where the proceedings relate to the same patent, are between the same two parties, and include the same prior art reference. The Federal Circuit, in In re: NuVasive, Inc., Case Nos. 2015-1672 and 2015-1673 (Fed. Cir. Nov. … Continue Reading
The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious. In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings. These decisions … Continue Reading
An updated discussion of this issue is available here: Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims? The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend … Continue Reading
In Synopsys, Inc. v. Mentor Graphics Corporation, Appeal Nos. 2014-1516, 2015-1530 (Fed. Cir. Feb. 10, 2016), the Federal Circuit affirmed the PTAB’s judgment that two of the challenged claims were not invalid as anticipated. The court also held that (1) the final order of the Board need not address every claim raised in the petition … Continue Reading
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