On February 8, 2024, the Federal Circuit Court of Appeals held that confidentiality provisions do not protect a document from being prior art if that document is intended for engagement with target audience. Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059, 1065...
On January 18, 2024, the Federal Circuit Court of Appeals held that a party joining an already-instituted IPR is not limited to the claims and grounds challenged in the IPR where the patent owner has introduced new claims. Cywee Group Ltd., v. ZTE (USA), Inc., LG...
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...
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,...
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...
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...
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.”...
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...
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.”...