En Banc Federal Circuit Questions Standard for Design Patent Obviousness
By Jesse Wynn and John Evans – Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked tough...
Federal Circuit Affirms Claim Construction and How It Applies
By Luke Cipolla, Matt Silveira, and Matt Johnson - In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged...
PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art
By Connor Scholes, Owen Carpenter, Bill Devitt, and Dave Maiorana - In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be...
Reverse Engineered Search Insufficient For IPR/PGR Estoppel
By Tom Ritchie - In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review (PGR)...
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial
By Daniel Sloan and Josh Nightingale - The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...