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

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