Category Archives: Uncategorized

DC prosecution laches finding affirmed (unreasonable and inexcusable delay by PMC and prejudice to Apple)

Posted on January 25, 2023 by Patrick J. Halloran, Ph.D., J.D.

Personalized Media Communications, LLC v. Apple Inc. Docket No. 2021-2275 (https://cafc.uscourts.gov/opinions-orders/21-2275.OPINION.1-20-2023_2066571.pdf) REYNA, CHEN, STARK January 20, 2023 Brief Summary:   DC decision of prosecution laches (unreasonable and inexcusable delay by PMC and prejudice to Apple) affirmed. Summary:  Personalized Media Communications … Continue reading →

Posted in Equitable estoppel, Laches, Prosecution History Estoppel, Uncategorized | Leave a comment

DC dismissal of Alarm.com’s reexamination requests following IPR FWDs reversed as PTO did not decide “whether the requests presented a ‘substantial new question of patentability’”

Posted on March 14, 2022 by Patrick J. Halloran, Ph.D., J.D.

Alarm.com Incorporated v. USPTO Docket No. 2021-2102 (https://cafc.uscourts.gov/opinions-orders/21-2102.OPINION.2-24-2022_1913344.pdf) TARANTO, CHEN, CUNNINGHAM February 24, 2021 Brief Summary:  DC decision dismissing Alarm.com’s ex parte reexamination requests following IPR FWDs of the same claims reversed and remanded as PTO did not decide “whether … Continue reading →

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“Substantial risk of future infringement” provides standing for IPR appeal; non-obviousness conclusion vacated and remanded

Posted on January 11, 2021 by Patrick J. Halloran, Ph.D., J.D.

General Electric Company v. Raytheon Technologies Corporation Docket No. 2019-1319 (IPR2017-00428) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1319.OPINION.12-28-2020_1707556.pdf) LOURIE, REYNA, HUGHES December 23, 2020 Brief Summary:  GE found to have standing due to a substantial risk of future infringement”; Board finding of no obviousness vacated and … Continue reading →

Posted in Appeal, Obviousness, Obviousness-Teaching Away, Uncategorized | Leave a comment

Induced infringement decision reversed (“subjective bad faith”); eligibility decision affirmed (“improving a basic function of a computer”)

Posted on October 27, 2020 by Patrick J. Halloran, Ph.D., J.D.

TecSec, Inc. v. Adobe Inc., et al. Docket No. 2019-2192, -2258 PROST, REYNA, TARANTO October 23, 2020 Brief Summary:  DC incorrectly excluded evidence of induced infringement (“subjective bad faith”) but correctly found patent eligibility (“directed to improving a basic function … Continue reading →

Posted in Inducement to Infringe, Patent Eligibility (101), Section 101 (see also Patentability), Software, Uncategorized | Leave a comment

Grant of JMOL reversed as “an old method of administration of an old product made by a new process is not novel and cannot be patented”

Posted on October 2, 2020 by Patrick J. Halloran, Ph.D., J.D.

Biogen MA Inc. v. EMD Serono, Inc. et al. (Pfizer Inc., Bayer, Novartis) Docket No. 2019-1133 NEWMAN, LINN, HUGHES September 28, 2020 Brief Summary:  DC instructed to reinstate jury verdict of invalidity for anticipation of Biogen’s IFN-b method of treatment … Continue reading →

Posted in Anticipation (35 USC 102), Product-by-Process, Uncategorized | Leave a comment

DC erroneously constructed “antibody” and “antibody fragment”, FC panel finds

Posted on September 9, 2020 by Patrick J. Halloran, Ph.D., J.D.

Baxalta, Inc. et al. v. Genentech, Inc. et al. Docket No. 2019-1527MOORE, PLAGER, WALLACH August 27, 2020 Brief Summary:  DC non-infringement finding vacated and remanded due to erroneous construction of “antibody” and “antibody fragment”. Summary:    Baxalta appealed DC judgment based … Continue reading →

Posted in Claim Construction, Claim Differentiation, Uncategorized | Leave a comment

DC grant of SJ affirmed due to “an unenforceable agreement to agree”

Posted on September 7, 2020 by Patrick J. Halloran, Ph.D., J.D.

Phytelligence, Inc. v. Washington State UniversityDocket No. 2019-2216PROST, REYNA, STOLLAugust 27, 2020 Brief Summary: DC grant of SJ to WSU affirmed since option agreement was “an unenforceable agreement to agree”, not an “agreement with open terms” that could be deciphered … Continue reading →

Posted in Licensing, Uncategorized | Leave a comment

IPR obviousness determinations affirmed; preamble limiting due to reliance for antecedent basis

Posted on June 29, 2020 by Patrick J. Halloran, Ph.D., J.D.

Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC Docket No. 2019-1622, -1623 (IPR2017-01809, -01810) LOURIE, MOORE, O’MALLEY June 25, 2020 Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the … Continue reading →

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Rejected claim construction proposal during IPR was not prosecution history estoppel, FC affirms infringement under DOE; second infringement decision reversed

Posted on March 27, 2020 by Patrick J. Halloran, Ph.D., J.D.

Galderma Labs., Nestle Skin Health S.A. et al. v. Amneal Pharm. LLC et al. Docket No. 2019-1021 LOURIE, MOORE, STOLL March 25, 2020 Non-Precedential Brief Summary: DC finding of infringement of certain claims affirmed as statements made in related IPR … Continue reading →

Posted in Claim Construction, Doctrine of equivalents, Infringement, Inter Parties Review (IPR), IPR, Prosecution History Estoppel, Uncategorized | Leave a comment

FB improperly joined to its existing IPRs under 315(c); various obviousness conclusions affirmed and vacated

Posted on March 25, 2020 by Patrick J. Halloran, Ph.D., J.D.

Facebook, Inc. v. Windy City Innovations, LLC Docket No. 2018-1400-3, -1537, -1540-41 (IPR2016-00=1156-59, IPR2017-00659, -00709 PROST, PLAGER, O’MALLEY March 18, 2020 Brief Summary: Board improperly joined FB as a party to its own existing IPRs under section 315(c); various obviousness … Continue reading →

Posted in Inter Parties Review (IPR), IPR, Obviousness, Uncategorized | Leave a comment