by Josh Nightingale | Jun 13, 2023 | Federal Circuit
By Adam J. Cook* and Josh Nightingale – Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR...
by Josh Nightingale | May 5, 2023 | Estoppel, Federal Circuit
By Josh Nightingale – Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on grounds that were...
by Matthew Johnson | Feb 10, 2022 | Federal Circuit, Prior Art Issues, PTAB News
By Robby Breetz, Christian Roberts, and Matt Johnson – Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)...
by Sarah Geers | Sep 28, 2021 | Federal Circuit, Federal Circuit Appeal, Petitions, PTAB News
By Lisa Furby and Sarah Geers – In Baker Hughes Oilfield v. Hirshfeld, the Federal Circuit held that the PTAB violated the Administrative Procedure Act (“APA”) by finding certain instituted claims obvious on grounds it had indicated in its institution that it...
by Albert Liou | Sep 17, 2021 | Federal Circuit, Federal Circuit Appeal, Prior Art Issues
By Albert Liou – In the recent precedential Federal Circuit decision Valve Corporation v. Ironburg Inventions Ltd., No. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. Cir. August 17, 2021), the Federal Circuit ruled on an issue that is not often...
by John Evans, Ph.D. | Sep 3, 2021 | Design Patents, Federal Circuit
By Kerry Barrett and John Evans – As with utility patents, a patentee can counter obviousness of a patented design by producing objective evidence that the design was non-obvious, like commercial success, copying, etc. But to be persuasive, a nexus must exist...
