Articles & Media

USPTO Issues IPR Guidance On § 311(b) Prior Art

»»On August 18, 2020, the USPTO issued guidance on § 311(b)’s institution requirement that IPR’s may only be petitioned “on the basis of prior art constisting of patents or printed publications” and how this applies to statements of the applicant in the specification. The use of statements like these is referred to as ‘Applicant-Admitted Prior […]

Federal Circuit Overturns Pre-Suit Damage Award Against NetScout

»»On July 22, the Federal Circuit ruled that marking requirements for pre-suit damages cannot be satisfied based on defendant’s infringement of a related method claim in Packet Intelligence LLC v. NetScout Systems, Inc. In the case, Packet Intelligence sued NetScout Systems for patent infringement in the Eastern District of Texas. The Jury found in favor […]

Federal Circuit Upholds Subject Matter Eligibility Review for Substitute Claims In IPR Proceedings

»»The Federal Circuit ruled that the PTAB May review all aspects of patentability for substitute claims in inter partes review (IPR) proceedings in Uniloc 2017 LLC v. Hulu, LLC last month. At the PTAB, Hulu petitioned for IPR on Uniloc’s patent “System and Method for Adjustable Licensing of Digital Products”.  In the course of the […]

Arthrex: Federal Circuit Rejects En Banc Rehearing On PTAB Judge Constitutionality

»»The Federal Circuit has denied the request for rehearing on their Arthrex decision from this past fall. As Maier and Maier’s own Steven Kunin describes here, this rejection sets up a probable grant of certiorari on the issue from the Supreme Court. “The split among the judges provides a roadmap for a probable Supreme Court […]

New Rules For Proving Unintentional Delay At USPTO

»»On March 2, 2020, the USPTO published a new notice in the Federal Register clarifying their practice regarding unintentional delay. “The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a […]

Federal Circuit Uses Reference Number Conventions In Claim Construction

»»On February 21, 2020, the Federal Circuit remanded Ironworks Patents LLC v. Samsung Elecs. Co. back to the Northern District of California due to its flawed claim construction below. The panel of judges found the term ‘camera unit’ to have been misinterpreted to require a battery and external interface device over the specification and convention […]

Federal Circuit: Indefinite Claims Reviewable In IPRs

»»On February 4, 2020, the Federal Circuit issued a precedential decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp.. The decision remanded an inter partes review (IPR) proceeding to the Patent Trial and Appeal Board (PTAB) for review of claims under the proposed novelty and obviousness grounds, despite the fact that the Board had […]

USPTO Awaits Arthrex En Banc Rehearing Decision As PTAB Judges Remain In Flux

»»Final briefing from Appellant Arthrex, Inc., Appellees Arthrocare Corp. and Smith & Nephew, Inc., and the Intervening United States Government was filed January 17, 2020 on the request for en banc rehearing. The decision at issue centered on the constitutionality of the appointment process for the PTAB Administrative Patent Judges (APJs) and whether PTAB proceedings […]

Supreme Court Rejects Federal Circuit’s Plea For Help With §101

»»This past summer, the Federal Circuit issued an en banc decision against rehearing in Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al. In the 7-5 decision, there were a staggering 8 separate opinions (four concurring and four dissenting). The common refrain in each was the need for the Supreme Court to address the […]

Alice Test Saves Nintendo From Jury’s $10.1 Infringement Verdict As Northern District of Texas Rules Patent Invalid Under §101

»»On January 17th, 2020, Chief Judge Barbara Lynn granted Nintendo’s Motion for Judgment as a Matter of Law, invalidating iLife’s patent claim asserted against Nintendo for its Wii U games and the resulting jury verdict award of $10.1 million. In the motion, Nintendo raised challenges that the patent (U.S. Pat. No. 6,864,796) for Systems Within […]