In Dragon Intellectual Property LLC v. Dish Network L.L.C. No. 22-1621 (Fed. Cir. May 20, 2024), the Federal Circuit clarifies the standard for “exceptional” cases under 35 U.S.C. § 285. The case concerns attorneys’ fees and the application of § 285 attorneys’ fees to inter partes review (“IPR”) proceedings, and addresses attorney liability for § 285 fee awards.Continue Reading The Federal Circuit Interprets the Application of 35 USC § 285 and Attorney’s Fees

In Ioengine, LLC v. Ingenico Inc. No. 2021-1227, 2021-1331, 2021-1332 (Fed. Cir. May 03, 2024), the case addresses the patentability/validity of three patents. In particular, this case discusses the application of the printed matter doctrine during inter partes review, the treatment of newly introduced claim constructions on appeal, and the PTAB’s anticipation and obviousness determinations.Continue Reading Interpreting the Printed Matter Doctrine in Inter Partes Review

In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”) instituted. LG later filed a separate IPR petition also challenging the ’438 patent and moved to join ZTE’s IPR. LG acknowledged that its IPR petition was untimely under 35 U.S.C. § 315(b) because CyWee sued LG more than a year before LG filed its petition. LG premised its request for joinder on several limitations, the most relevant of which was that LG would act only as a passive understudy and not assume an active role in the IPR unless ZTE ceased to participate in the instituted IPR.Continue Reading Navigating Revised Motions to Amend in Inter Partes Review as a Non-active, Joined Party

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

In Volvo Penta of the Americas, LLC, v. Brunswick Corporation No. 2022-1765, pending cite (Fed. Cir. August 24, 2023), Brunswick petitioned for an inter partes review of Volvo’s U.S. Patent No. 9,630,692 patent (“the ’692 patent”) challenging all claims as obvious. Brunswick filed its challenge on the same day as the launch of its competing product – the Bravo Four S. The ’692 patent relates to a stern-mounted motor design with forward, bow-facing propellers. It was undisputed that both Volvo and Brunswick have competing products that embody the ’692 patent.Continue Reading Speed Kills or can at Least Provide a Motivation to Combine