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. […]
CAFC Opinion No. 2022-1194, Decided December 7, 2023 (Dyk, Prost, Hughes) (Precedential) Overview: No infringement of narrow method-of-use pharma patent where generic drug is labeled for a broad/general use claimed in an expired patent. Facts/Procedural Posture: Lundbeck initially obtains patents on using drug to treat depression (the broader patents) Then, after finding that the drug […]
CAFC Opinion No. 2022-1906, Decided December 4, 2023 (Lourie, Dyk, Taranto) (Precedential) Overview: $2.2 billion jury verdict overturned: jury’s infringement finding reversed for one of the two asserted patents, jury’s damage award vacated and remanded for the other asserted patent. Facts/Procedural Posture: VLSI (an NPE) sues Intel in W.D. Texas for infringing two patents: the […]
CAFC Opinion No. 2022-1532-1533, Decided August 7, 2023 (Lourie, Dyk, Taranto) (Precedential) Overview: Petitioner in IPR must be given an opportunity to respond to new construction raised in the Patent Owner Response (POR). Facts/Procedural Posture: Medtronic, Inc. owns the ’758 and ’148 patents which are directed to the transcutaneous charging of implanted medical devices. Axonics […]
CAFC Opinion No. 2022-1765, Decided August 24, 2023 (Moore, Lourie, Cunningham) (Precedential) Overview: Objective indicia of non-obviousness is important part of obviousness determination, and nexus requirement should not be overly restrictively. Facts/Procedural Posture: Volvo Penta marketed a successful line of boat engine drives where the propellers are forward facing and thus tucked under the boat. […]
CAFC Opinion No. 2022-1293-1296, Decided August 28, 2023 (Lourie, Dyk, Reyna) (Precedential) Overview: Obviousness-type double patenting (“ODP”) is based on Patent Term Adjustment (“PTA”) adjusted expiration date of patent. Facts/Procedural Posture: Cellect sued Samsung Electronics, Co. (“Samsung”) for infringement of challenged patents in U.S. District Court for the District of Colorado. Samsung requested ex parte […]
Case No. 22-1094, Decided April 13, 2023 Prost, Reyna, Stark Overview: TTAB findings on likelihood of confusion under DuPont factors analysis are supported by substantial evidence where the Board’s pathway may be reasonably discerned, even if weight accorded to each factor is not explicit. Facts/Background: Charger Ventures filed intent-to-use TM application to register “SPARK LIVING” […]
Case No. 21-2356, Decided May 24, 2023 Moore, Lourie (majority), and Dyk (dissenting) Overview: Determination of whether an invention would work for its intended purpose for the purposes of actual reduction to practice to antedate art cited under §102(e) does not require 1:1 comparison or quantitative assessment, merely that an inventor would understand a test […]