On October 13, 2023, the Federal Circuit vacated a judgment of invalidity based on collateral estoppel from a related case. Finjan LLC v. SonicWall, Inc., Case No. 22-1048 (Fed. Cir. Oct. 13, 2023). In that related case, a district court granted summary judgment on...
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Case Updates
Petitioner’s IPR Reply: New Argument or Proper in Scope?
On August 11, 2023, the Federal Circuit laid out the permissible scope of a petitioner’s reply in IPR. Before the court was an appeal of PTAB’s findings of unpatentability, on remand, in IPR2016-01502 re U.S. Patent No. 6,548,019. Rembrandt Diagnostics, LP v. Alere,...
Motivation to Combine Not Confined to Use Disclosed in Prior Art
On June 10, 2023, the Federal Circuit vacated and remanded PTAB’s findings of unpatentability in IPR2020-00679 re U.S. Patent No. 8,626,314 and IPR2020-00715 re U.S. Patent No. 8,036,756 (the ’314 patent and the ’756 patent collectively as “Medtronic patents”), where...
Secondary Evidence Lacks Nexus if It Exclusively Relates to a Known Feature
On June 6, 2023, the Federal Circuit reversed PTAB’s judgment in IPR2020-01139 re U.S. Patent No. 8,382,186, where the Board found compelling evidence in secondary considerations to overcome an otherwise obvious prior art combination. Yita LLC v. MacNeil IP LLC, Case...
Estoppel Is Not a Two-Way Street Between Courts and PTAB
35 U.S.C. § 315(e) prohibits a petitioner in an Inter Partes Review (“IPR”) that results in a final written decision from asserting, in litigation, invalidity “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”...
Claim Construction: Context Over Extrinsic Evidence
On April 12, 2023, the U.S. Court of Appeals for the Federal Circuit rejected the district court’s claim construction for “computer-readable recording medium” and, as a result, reversed the district court’s ineligibility determination under 35 U.S.C. § 101. Sequoia...
The Expanding Scope of Inter Partes Review Estoppels
35 U.S.C. § 315(e) prohibits a petitioner in an Inter Partes Review (“IPR”) that results in a final written decision from asserting, in litigation, invalidity “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”...