Important to keep claim construction in mind when drafting a patent application

By Joseph M. Hallman

Claim construction, or how claim terms of a patent are understood, interpreted, and construed, is often a major factor in the outcome of a patent infringement lawsuit. Claim construction also can often be a highly contentious point of disagreement amongst parties in an infringement suit. The meaning of claim terms can often dictate the scope […]

Patent Owners Beware of Prior Adjudication Involving Related Patents

By Joseph M. Hallman

When patent claims are construed and interpreted in an adjudicative proceeding, such as patent infringement litigation in federal court or in an adjudicative proceeding before the Patent Trial and Appeal Board (“PTAB”), a preclusive effect can arise which can affect the validity of claims of related patents. For example, on December 8, 2022, in Google […]

Federal Circuit clarifies rules regarding patent term adjustment

By Joseph M. Hallman

Last month, in Sawstop Holding LLC v. Vidal, the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed two decisions by the District Court of the Eastern District of Virginia regarding patent term adjustment (“PTA”) for two patents owned by Sawstop Holding LLC (“Sawstop”). In both decisions the District Court granted summary judgement in […]

Inherent anticipation – Is the phenotype exhibited by a transgenic plant an inherent feature?

By Brian D. Keppler, Ph.D.

A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. If a prior art reference expressly sets forth each of the elements of a claim, then there is typically little question of whether or not the […]

Federal Circuit Revives SynQor Patent

By Julie L. Spieker

On February 22, 2021, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s decision that SynQor’s US Patent No. 7,072,190 was unpatentable. SynQor’s ‘190 patent relates to technology that converts DC current from one voltage to another for use in large computer systems and data communication equipment. […]

Federal Circuit affirms introduction of evidence in IPR petitioner’s reply briefs

By Joseph M. Hallman

On November 25, 2020, in VidStream LLC v. Twitter, Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed an appeal from the Patent Trial and Appeal Board (“PTAB”) holding evidence introduced by the petitioner in a reply brief of an inter partes review (“IPR”) proceeding, after the petition had been […]

Federal Circuit Reinstates Patent Claims Previously Found Obvious by Patent Trial and Appeal Board

By Julie L. Spieker

On July 31, 2020, in the precedential opinion Alacritech, Inc. v. Intel Corp., the United States Court of Appeals for the Federal Circuit (hereinafter the “Federal Circuit”) reinstated three claims of Alacritech’s patent, holding that the Patent Trial and Appeal Board (hereinafter the “Board”) did not adequately support its finding that the asserted prior art […]

PTAB Makes Broadest Interpretation on Estoppel in IPRs

Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file […]

An IPR Appellant Must Establish an Injury to Have Standing

By Blog Staff

In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an […]

PTAB to Consider When Conference Materials are Prior Art

By Blog Staff

In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that […]