On March 18, 2020, in Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues.

Windy City Innovations, LLC (“Windy City”) brought a patent infringement suit against Facebook, Inc. (“Facebook”) in a district court. Exactly

In Customedia Techs., LLC v. DISH Network Corp., the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decisions holding that claims 1-6, 8, 17, and 23 of U.S. Pat. No. 8,719,090 (the “’090 Patent”) and claims 1-4, 6-7, 16-19, 23-24, 26-28, 32-36, and 41 of U.S. Pat. No. 9,053, 494

The Federal Circuit was recently asked to review the interplay of real-parties-in-interest and the inter partes review (“IPR”) time-bar. Acoustic Technology, Inc., Appellant v. Itron Networked Solutions, Inc., Nos. 2019-1059, 2019-1060 (Fed. Cir. Feb. 13, 2020) (opinion available here).  The facts raised an interesting question of how business mergers can affect IPR and

In BioDelivery Sciences International v. Aquestive Therapeutics, Inc., the Federal Circuit recently denied a petition for a rehearing en banc after the Patent Trial and Appeal Board (“PTAB” or “the Board”) interpreted its remand order to “implement the [Supreme] Court’s decision in [SAS Institute v. Iancu]”[1] by modifying its institution decision, denying

The Federal Circuit recently addressed the requirement for establishing “nexus” for secondary indicia. On December 18, 2019, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) vacated and remanded a PTAB decision of non-obvious, and ultimately raised the bar a patentee needs to meet to invoke secondary considerations of non-obviousness. In Fox Factory, Inc. v. SRAM, LLC, No. 18-2024 (Fed. Cir. Dec. 18, 2019), the Federal Circuit vacated an inter partes review (“IPR”) final decision holding the claims of U.S. Patent No. 9,182,027 as non-obvious due in large part to a finding of commercial success attributed to the claimed invention. On appeal, the Federal Circuit concluded that the PTAB improperly applied the presumption of nexus between the evidence of commercial success and the claims of the patent. The court held that the proper presumption of nexus can only be achieved by proving that the product sold by the patentee is “essentially the claimed invention.” Id. at 12.

Continue Reading Federal Circuit Raises the Standard of Nexus Requirement for Secondary Indicia of Non-Obviousness

Recently, the Federal Circuit held that Administrative Patent Judges (“APJs”) comprising the 3-member USPTO Patent Trial and Appeal Board (“PTAB”) are unconstitutionally appointed in violation of the Appointments Clause of the Constitution. The court promptly remedied the violation and limited its effect on other PTAB decisions.

Continue Reading The Federal Circuit’s Determination That Administrative Patent Judges are Unconstitutionally Appointed

On October 4, 2019, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking to revise the rules of prosecution practice pertaining to patent term adjustment (“PTA”) in view of the decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Supernus Pharm., Inc. v. Iancu,

On October 1, 2019, in Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019), the Federal Circuit held that the Patent Trial and Appeal Board (“the Board”) abused its discretion by requiring Honeywell Int’l Inc. (“Honeywell”) to show that the requirements of 35 U.S.C. § 255 were met before