ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged in a fact-specific obviousness inquiry regarding capacitor elements disclosed in the prior art.Continue Reading Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges disclosed in the patent specification, and (2) the kind of prior art disclosure language which supports a finding of a motivation to combine for an obviousness rejection.Continue Reading Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine

In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors had diligently reduced the claimed invention to practice.Continue Reading Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition

In Sisvel International S.A. v. Sierra Wireless, Inc. et al., Nos. 22-1493, 22-1547 (Fed. Cir. 2023), Sierra Wireless challenged claims 1-10 of Sisvel’s U.S. Patent No. 6,529,561 (“the ’561 patent”) in an inter partes review. The Patent Trial and Appeal Board’s final written decision found claims 1-3 and 9 unpatentable, but upheld the patentability of claims 4-8 and 10.Continue Reading Identifying Protocols by Name May Disclose Sufficient Structure for Computer-Implemented Means-Plus-Function Limitations

In VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. 2023), VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759 patent”). After a jury trial in 2021, VLSI was awarded $1.5 billion for literal infringement of the ’373 patent and an additional $675 million for infringement of the ’759 patent under the doctrine of equivalents. Prior to trial, Intel sought to amend its answer to assert a licensing defense. Intel argued that due to a recent change in ownership of Finjan, Inc., Intel was covered under Finjan’s license with VSLI because both Intel and Finjan were under the control of Fortress Investment Group LLC. The district court denied Intel’s motion. Intel appealed the infringement verdicts as well as the district court’s denial of the motion to amend.Continue Reading The Importance of Reasonable Particularity in a Doctrine of Equivalents Argument

In H. Lundbeck A/S, et al. v. Lupin Ltd., et al., Nos. 2022-1194, 2022-1208, and 2022-1246 (December 7, 2023), the Federal Circuit held that generic pharmaceutical companies may continue to use skinny labels to avoid infringement of method of treatment claims as long as they do not engage in advertising or promotional activities that encourage infringement of the patents.Continue Reading Federal Circuit Affirms Skinny Label Carve Outs

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining obviousness under 35 U.S.C. § 103. Continue Reading The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. 2021-2299, 2021-2338 (Fed. Cir. Sept. 15, 2023), the Federal Circuit vacated a jury verdict of non-infringement in a design-patent infringement action filed by Columbia Sportswear against Seirus Innovative Accessories. It found that the lower court erred by failing to instruct the jury that “comparison prior art” must be tied to the same article of manufacture as that claimed.Continue Reading “Comparison Prior Art” Must Be Tied to the Same Article of Manufacture as That Claimed

In Incept v. Palette Life Sciences 21-2063, 21-2065 (Fed. Cir. Aug. 16, 2023), the case addresses the Board’s anticipation and obviousness determinations in two IPRs (IPR2020-00002 and IPR2020-00004), where the Board held the claims in the challenged patents unpatentable as anticipated by, or obvious in view of, the asserted prior art.Continue Reading Anticipation and Obviousness in Patent Law: An Analysis of Recent IPR Decisions

In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023), the case addresses the Patent Trial and Appeal Board’s (“PTAB’s”) authority to issue a Final Written Decision in a post grant review (“PGR”) after the prescribed statutory deadline.Continue Reading PTAB’s Authority to Issue a Final Written Decision After a Statutory Deadline

In this case, the Federal Circuit determined the sufficiency of evidence to rebut a nexus between objective evidence and non-obviousness; and to establish the objective indicia of copying.Continue Reading Federal Circuit Clarifies Standards to Establish Nexus Between Objective Evidence and Non-Obviousness, and to Establish Copying in Medtronic et al. v. Teleflex Innovations