Federal Circuit

Subscribe to Federal Circuit via RSS

On October 5, 2017, the Patent Trial and Appeal Board (“Board”) issued a final written decision in an inter partes review proceeding filed by Neptune Generics, LLC (“Neptune”) challenging the patentability of the claims in Eli Lilly & Co.’s Patent No. 7,772,209 (“the ’209 patent”).  The Board held that Neptune failed to establish that claims…

Remands and reversals of the Board are relatively rare.  Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1]  Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged…

On September 26, 2017, in In re Smith International, Inc., the Federal Circuit reversed the PTAB’s decision affirming an examiner’s final rejection in an ex parte reexamination. During the ex parte reexamination, the examiner rejected claims 28-36, 39-46, 50, 79-81 and 93-99 of U.S. Patent No. 6,732,817 (“’817 patent”) as anticipated or obvious in…

In Ultratec, the Federal Circuit highlighted several problems with the Patent Trial and Appeal Board’s (“PTAB” or “Board”) permissive rules of trial proceedings and held that the PTAB abused its discretion in the consideration of supplemental information.

By way of background, Ultratec sued Captioncall for infringement of eight patents directed to systems for assisting…

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. LTD., 2016-2321 (Fed. Cir. August 22, 2017)(designated precedential), the Federal Circuit upheld the PTAB’s finding that a patent directed to an HVAC system was invalid.  However, a concurring opinion criticized the PTAB’s joinder practice and use of expanded panels, indicating that such practices…

In Homeland Housewares, LLC, v. Whirlpool Corporation, IPR2014-00877 (Fed. Cir. Aug. 4, 2017) (Judges Prost, Newman, and Dyk), the Federal Circuit reversed a Board decision in an inter partes review of claims 1-16 of the U.S. Patent No. 7,581,688 (“’688 patent”), which found the challenged claims to be not invalid as anticipated by U.S.…

The Federal Circuit recently changed the scope of CBM eligible patents. While the Patent Trial and Appeals Board (PTAB) had previously interpreted its jurisdiction broadly, the Federal Circuit, in two recent decisions, considerably narrowed the universe of patents eligible for CBM review. This post analyzes the results of those decisions as they have played out…