Category Archive: Federal Circuit Decisions

Jan 04

Federal Circuit to Reconsider Achates Decision en banc

The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi One, LLC v. Broadcom Corp., the Court requested supplemental briefing on the following issue: “Should this court overrule Achates Reference Publishing, …

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Nov 29

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References, and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions.  The trend of deference to the Board continues, as illustrated in Unwired Planet, LLC v. Google Inc., 2015-1810, -1811, Nov. 15, 2016. Unwired involved one patent, U.S. …

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Nov 17

In re NuVasive Brings the Administrative Procedure Act to IPRs

NuVasive owns US 8,187,334, which claims certain spinal implants. Medtronic filed a petition challenging various claims of the ‘334 patent as obviousness over US 2002/0165550 (Frey) in view of US 5,860,973 (Michelson). Medtronic also filed a second petition challenging other claims over a promotional brochure for the Synthes Vertebral Spacer-PR (SVS-PR) in view of Michelson. …

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Nov 11

Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB

More often than not, evidentiary issues in IPR proceedings fail to make headlines because the Board will structure its Final Written Decision to avoid evidentiary challenges. Findings that a party’s motion to exclude is denied as moot are common. That makes the Federal Circuit’s decision in REG Synthetic Fuels, LLC v. Neste Oil Oyj (November …

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Nov 10

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger—just the opposite of what is usually seen in district court litigation.  The narrowing strategy is logical—particularly where there is very close prior art, a patentee may need to seek a narrow construction in …

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Aug 30

Federal Circuit Demonstrates Willingness to Rein in PTAB’s Onerous Idle Free Rules Regarding Claim Amendments

Patentees have been generally frustrated with the Board’s unwillingness to grant motions to amend. The Board’s Idle Free case, and its progeny, have added a number of requirements to a motion to amend that are above and beyond the simple requirements set forth in the IPR implementing statute. While the Federal Circuit has, generally, stated that …

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Aug 16

“Substantial Evidence” Hurdle is Substantially Difficult to Overcome

One of the less appreciated hurdles to a successful appeal of a Final Written Decision in an IPR proceeding is the “substantial evidence” standard of review the Federal Circuit applies to the Graham factors that underlie a determination of obviousness.  Although the ultimate determination of obviousness is a legal issue subject to de novo review, the …

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Aug 11

PTAB Reversed–Common Sense Improperly Used to Supply Missing Limitation in Obviousness Inquiry

In a rare rebuke of the PTAB’s discretion, the Federal Circuit has outright reversed a finding of obviousness based on the Board’s misapplication of the law on the permissible use of “common sense” in an obviousness analysis.  The case, Arendi S.A.R.L. v. Apple Inc., Google Inc., and Motorola Mobility LLC (Aug. 10, 2016) involved a …

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Aug 05

Federal Circuit Provides Ammunition to Patentees In Magnum Decision

Patent Owners gained a bit of a reprieve in the Federal Circuit’s recent decision in In Re Magnum Oil Tool Int’l, Ltd., decided on July 25, 2016. In several key respects, Patent Owners regained some footing in the otherwise daunting IPR process. As an initial matter, in one of its first post-Cuozzo (Supreme Court edition) decisions, the …

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May 19

PTAB Reversed for Failing to Explain “Why” a Person of Skill Would Modify the Prior Art

It is no secret that patent owners have, on average, struggled at the PTAB over the last three and a half years.  Some practitioners say that a reason for this result is that the Board many times takes an aggressive approach in the assessment of “obviousness” under Section 103.  Yesterday, the Federal Circuit issued its …

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