By: Aikaterina (Katina) Assimacopoulos Fed. Cir. No. 23-1001 (May 21, 2024) (Taranto, Dyke, and Mayer) Issue: Is the phrase “entirely on [one’s] own time” unambiguous in an employment contract? Holding: No. “Entirely on [one’s] own time” could reasonably be interpreted to refer to all ‘off-the-clock’ time, or only a portion of it, and, thus, interpretation […]
By: Aikaterina (Katina) Assimacopulous Fed Cir. No. 22-1621 (May 20, 2024) (Moore, Stoll, and Bencivengo) Issues: Does § 285 extend recovery to IPR proceedings or liability to counsel? Holding: No. § 285 entitles a petitioner neither to recover fees incurred in parallel IPR proceedings nor to hold counsel jointly and severally liable. Background: Dragon sued […]
By: Aikaterina (Katina) Assimacopulous Fed. Cir. No. 2021-2349 ( May 21, 2024) (en banc) Issue: Does Supreme Court precedent overrule the Rosen-Durling test for design patent obviousness? Holding: Yes. Obviousness requires neither (1) the primary reference be “basically the same” as the claimed design; nor (2) any secondary reference be “so related” to the primary […]
Fed. Cir. 2022-1954, 2022-2295 March 27, 2024 (Taranto, Chen, Hughes; Precedential) Summary: The Federal Circuit vacates the District Court for the District of Massachusetts’s judgment in favor of Lacerta because the district court gave incorrect jury instructions, which did not mention several objective indica of nonobviousness for which there was evidence. Background In 2018, Inline […]
Fed. Cir. 2022-1630 Mar. 27, 2024 (Prost, Taranto, Hughes; Precedential) Summary: The Federal Circuit affirmed the District Court for the Northern District of Illinois and found that (1) patent owners may be able to recover damages for foreign sales if a domestic act of infringement under § 271(a) is the proximate cause of the foreign […]
Fed. Cir. 2022-1877 March 25, 2024 (Lourie, Stoll, Cunningham; Precedential) Summary: The Federal Circuit affirmed the District Court for the Northern District of California and found that the FDA safe harbor under § 271(e)(1) applied to Meril’s importation of two Myval prosthetic heart valve systems. Background In 2019, Meril imported two Myval prosthetic heart valve […]
Summary: The Federal Circuit overturns the PTAB to find written description for a percentage range for the length of a heating element in the context of an electro-mechanical smoking device. Background Appellant-Patent Owner (Rai Strategic) appeals a PRG filed by Appellee-Petitioner (Philip Morris), which found that the challenged U.S. Patent No. 10,492,542 (“the ’542 patent”) […]
PTAB IPR2021-1446 March 10, 2023; Designated Precedential November 15, 2023 (Melvin, Cotta, Wisz; PTAB Precedential) Summary: Precedential PTAB opinion details the test for a patent or published application to obtain the effective filing date of a claimed provisional under AIA Section 102(d). Background Petitioner (Penumbra) filed an IPR challenging U.S. Patent No. 10,531,883 (“the ’883 […]
Federal Circuit 2022-1751, 2022-1813 February 8, 2024 (Reyna, Hughes, Stark; Precedential) Summary: The Federal Circuit overturns the PTAB to find that despite limited distribution and copyright restrictions, Petitioner’s operating manuals are publicly accessible printed publications. Background Appellate-Petitioner (Weber) filed IPR petitions on two patents (U.S. Patent Nos. 10,639,812 & 10,625,439) related to high-speed mechanical slicers […]
CAFC Opinion No. 2022-1482, Decided November 21, 2023 (Dyk, Hughes, Stoll) (Precedential) Overview: Matter of first impression: PTAB can issue final written decisions after the statutory deadline. Facts/Procedural Posture: Board institutes PGR of asserted Purdue patent. Roughly six months later, Purdue files for bankruptcy and imposition of an automatic stay. PTAB stays the PGR proceeding. […]