This case[1] addresses declaratory judgments of non-infringement in relation to subject-matter jurisdiction and the district court’s refusal to exercise discretionary jurisdiction.Continue Reading Navigating Declaratory Judgment: Mitek’s Bid to Head Off USAA’s Patent Claims
This Federal Circuit Opinion[1] analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures.Continue Reading Undetectable Amount of Magnification IS Magnification
This case[1] involves an appeal from Regeneron Pharmaceuticals, Inc.’s (Regeneron) efforts to prevent defendants from marketing biosimilar versions of EYLEA®, a drug used to treat eye diseases, by asserting patent infringement. In particular, the Federal Circuit addressed issues of personal jurisdiction, preliminary injunctions, and patent validity.Continue Reading Biopharmaceutical Patent Litigation: Regeneron’s Defense Against Biosimilar Launches
Mr. Storms, an individual with significant experience with Bitcoin mining, is the founder and sole employee of BearBox LLC. Mr. McNamara and Dr. Cline co-founded Lancium in November 2017 with the intention of co-locating flexible datacenters (e.g., Bitcoin miners) at wind centers to exploit the highly variable power output of windfarms.Continue Reading No Credit Where It Isn’t Due: The Importance of Preemption and Inventorship in Patent Law
In a recent decision with important implications for artificial intelligence (AI) driven innovation, the Patent Trial and Appeal Board (PTAB) denied a patent for an AI-based medical tool.[1] The refusal was not because the invention was not new or inventive. Rather, the refusal was because the invention did not meet a fundamental rule of U.S. patent law. In Ex parte Michalek, the PTAB specifically acknowledged that the patent claims at issue recited new information about the nexus between certain biomarkers and the development of lung cancer as facilitated by machine learning. In fact, prior to appeal, the applicant had successfully refuted all arguments raised by the patent examiner that the invention was not new or nonobvious. That said, based on U.S. Patent Office guidance and a related example from that guidance, the PTAB still determined the claims were flawed based on the legal principle of subject matter eligibility. Although the facts in this decision concern medical health innovation, the decision is helpful to inform patent strategy for AI-enabled inventions across various disciplines and industries.Continue Reading PTAB Rejects AI-Driven Medical Patent – Not for Novelty, But Eligibility
In Steuben Foods Inc. v. Shibuya Hoppmann Corporation, the Federal Circuit addressed the boundaries a district court may impose on experts by deeming their testimony wrong as a matter of law. Continue Reading Federal Circuit Addresses District Court Oversight of Expert Testimony on Infringement
This Federal Circuit opinion analyzes claim construction arguments and requests for remittitur in the context of preserving issues for appeal.Continue Reading The Importance of Preserving Issues for Appeal
This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application’s priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e).Continue Reading Is it Prior Art? Check the Provisional Application!
Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674 Patent”) are unpatentable as being obvious over the prior art.Continue Reading Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs
In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held that estoppel stemming from inter partes reviews (IPR) applies only to grounds based on patents and printed publications—not to patents or printed publications evidencing other grounds that could not have been raised during the IPR.Continue Reading A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE
On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just released a set of FAQs addressing questions about the memo.Continue Reading Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals