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Quantum computing, a field that harnesses quantum physical phenomena such as superposition and entanglement to perform complex computational tasks, is an emerging technology area. The uncertainties regarding the feasibility of technical features and the knowledge possessed by those of ordinary skill in the art in this area give rise to interesting enablement questions.
Continue Reading PTAB Rulings Shed Light On Quantum Computing Patents

In Maxell, Ltd. v. Amperex Technology Limited, 2023-1194 (Fed. Cir. Mar. 6, 2024), the Federal Circuit reaffirms that a patent claim that includes narrowing limitations requiring only some elements of a Markush group recited in the same claim are not indefinite under Section 112 so long as the claim, when read as a whole, is internally consistent and supported by the specification.
Continue Reading Federal Circuit Finds that a Narrowing Claim Limitation that Expressly Requires Optional Elements of a Markush Group from the Same Claim is Neither Contradictory Nor Indefinite

In Ioengine, LLC v. Ingenico Inc. No. 2021-1227, 2021-1331, 2021-1332 (Fed. Cir. May 03, 2024), the case addresses the patentability/validity of three patents. In particular, this case discusses the application of the printed matter doctrine during inter partes review, the treatment of newly introduced claim constructions on appeal, and the PTAB’s anticipation and obviousness determinations.
Continue Reading Interpreting the Printed Matter Doctrine in Inter Partes Review

The Federal Circuit held that patent claims directed to storing and providing medical images over the web as “virtual views” were invalid under 35 U.S.C. § 101 because they involved nothing more than “converting data and using computers to collect, manipulate, and display the data,” and the amended complaint failed to plausibly allege that creating “virtual views” on the fly involved unconventional technology or a concrete application that would transform the abstract idea to significantly more.
Continue Reading Federal Circuit Affirms Invalidation of Patents Manipulating Medical Imaging Data as Abstract

In Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc. 2023-1952 (Fed. Cir. April 11, 2024), this case involves appellate review of a district court’s findings regarding patent obviousness and infringement in Hatch-Waxman litigation. Specifically, the Federal Circuit reviewed the lower court’s obviousness analysis for dosage regimen and polymorph patent claims, as well as its interpretation of ANDA approval resetting provisions.
Continue Reading Federal Circuit Upholds Rifaximin Patent Rulings, Affirms ANDA Approval Restrictions

In 2010, Trading Technologies International, Inc. (“TT”) filed suit against IBG LLC and its subsidiary Interactive Brokers LLC for patent infringement. The four patents in question, U.S. Patent Nos. 6,766,304; 6,772,132; 7,676,411; and 7,813,996 — were related and directed to graphical user interfaces used by commodity traders. TT alleged that IBG’s software, TWS BookTrader, which is used by traders to buy and sell on exchanges, infringed its patents.
Continue Reading Federal Circuit Applies WesternGeco Framework to Expert’s Effort to Seek Royalties Flowing from Customers Overseas

In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”) instituted. LG later filed a separate IPR petition also challenging the ’438 patent and moved to join ZTE’s IPR. LG acknowledged that its IPR petition was untimely under 35 U.S.C. § 315(b) because CyWee sued LG more than a year before LG filed its petition. LG premised its request for joinder on several limitations, the most relevant of which was that
Continue Reading Navigating Revised Motions to Amend in Inter Partes Review as a Non-active, Joined Party

In recent years, a substantial number of “Schedule A” trademark infringement cases have been filed in the Northern District of Illinois. In such a case, the trademark owner may file a trademark infringement complaint against a number of defendants, with the complaint identifying the defendants as “The Individuals, Corporations, Limited Liability Companies, Partnerships and Unincorporated Associations Identified on Schedule A hereto.” [See, e.g., Opulent Complaint
Continue Reading How to Recover Attorneys’ Fees in a Schedule A Trademark Case in the Northern District of Illinois

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.
Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically, where a recipient of federal funds subcontracts out work to be performed using those federal funds and the subcontractor reduces an invention to practice, the Government’s license rights can be triggered by that reduction to practice even if no formal subcontractor agreement was in place between the fund recipient and subcontractor at the time of reduction to practice.
Continue Reading Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions

In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art printed publications based on the public accessibility of the operating manuals.
Continue Reading Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publications

EcoFactor, Inc. is the holder of U.S. Patent No. 8,498,753, titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” which focuses on optimizing climate control systems, particularly HVAC systems, in residential and commercial buildings. The patented technology utilizes a thermostat that considers external weather conditions and the thermal characteristics of individual structures to dynamically adjust temperature settings, aiming to improve energy efficiency and comfort. Within Claim 1, a method is outlined for decreasing the cycling time of a climate control system, comprising steps such as accessing historical temperature data, determining thermal performance values, and calculating the optimal activation
Continue Reading Federal Circuit Rules on when the Patent Trial and Appeal Board is Engaging in Erroneous Claim Construction

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged
Continue Reading Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions

In Medtronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors
Continue Reading Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges disclosed in the patent specification, and (2) the kind of prior art disclosure language which supports a finding of a motivation to combine for an obviousness rejection.
Continue Reading Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine