PTAB Claim Construction May Be Binding In Later Litigation
By Sue Gerber and Matt Johnson - In 2016, the Federal Circuit expressed doubt that claim constructions from the PTAB could give rise to estoppel in later litigation because “the [PTAB] applies the broadest reasonable construction of the claims while the district...
Private Sale Not Necessarily Public Disclosure Under Section 102(b)(2)(B)
By Matt Carey and Matt Johnson - In Sanho Corp. v. Kaijet Technology International Limited, Inc, the Federal Circuit affirmed the PTAB's decision finding obvious all challenged claims of the '429 patent, which relates to a device that provides ports for connecting...
Federal Circuit Clarifies Scope of Patent Owner Estoppel
By Shane Padilla, Matt Chung, Sarah Geers, and Matt Johnson - The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024)....
Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment
By Evan Tassis and Matt Johnson - In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition within the...
No Requirement to Raise All Arguments in Rehearing Request
By Lisamarie LoGiudice, Joe Farley, and Matt Johnson - The Federal Circuit in Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024) (Lourie, Chen, and Cunningham), affirmed the PTAB’s determination that claims of Voice Tech Corp.’s (“Voice...