Posts Tagged: "patent"

When exploring exemptions to patent infringement, there are several key U.S. Court of Appeals for the Federal Circuit cases to be aware of. First, we will examine a number of cases that have shaped the contours of the common law experimental use exemption, which applies to all industries, and secondly, we will look at recent decisions evaluating activities under the safe harbor of 35 U.S.C. § 271(e)(1) for products requiring U.S. Food and Drug Administration (“FDA”) approval.

Hopefully, I convinced you in my previous article that ex parte appeals are an underutilized tool when prosecuting patent applications at the U.S. Patent and Trademark Office (USPTO). Over the course of my career, I have filed around 160 appeals and have guidelines that I follow to optimize my chances of winning. None of these tips are as complex as our client’s inventions, but they will increase your chances of success.

The Federal Circuit says that you must disclose and describe the prior art, or your Jepson claim is invalid. Obviously, this means that pretty much every Jepson claim in existence is now invalid. It also ensures that Jepson claims will never be used again. It is also truly a mystery why the Patent Office would ever defend this PTAB decision and advocate in favor of requiring the prior art to be disclosed, discussed and supported. The Office advocating such a nonsensical ruling makes absolutely no sense given the Office prefers Jepson format. Rule 1.75(e) specifically encourages Jepson claim format.

Yesterday, the UK’s High Court of Justice of England and Wales (EWHC) issued an approved judgment in Motorola Mobility, LLC v. Telefonaktiebolaget LM Ericsson ruling on the scope of a 2011 wireless device licensing agreement between Motorola (a Lenovo company) and Ericsson. According to a Lenovo press release following the decision, this ruling defines the scope of that agreement such that most Motorola devices are covered. This would represent the second legal victory in the UK in recent weeks for Lenovo, Motorola’s owner, following the UK Court of Appeal’s ruling that Ericsson breached fair, reasonable and non-discriminatory (FRAND) obligations related to 4G and 5G standard-essential patents (SEPs) asserted in separate litigation.

Inventor Carolyn Hafeman—who is appealing Patent Trial and Appeal Board (PTAB) decisions invalidating her device location and theft prevention patent claims in favor of Google, LG and Microsoft—sent a letter Tuesday to the U.S. Court of Appeals for the Federal Circuit (CAFC) highlighting that the U.S. Patent and Trademark Office’s (USPTO’s) decision to rescind its memo on interim procedures for discretionary denial should call into question the underlying decisions in her case.

According to the United States Senate website, President Donald Trump has officially nominated John Squires to be the next Director of the U.S. Patent and Trademark Office (USPTO). The nomination was transmitted to the Senate on March 10 and referred to the Judiciary Committee. Squires has been rumored to be the pick for USPTO Director for several weeks. He is currently Chair of the Emerging Companies and IP practice at Dilworth Paxson and former Chief IP Counsel at Goldman Sachs from 2000 to 2008. Squires also was a partner with Gibson Dunn & Crutcher LLP in New York and with Perkins Coie before that.

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in CQV Co., Ltd. v. Merck Patent GmbH, vacating the Patent Trial and Appeal Board’s (PTAB) determination that CQV failed to show the unpatentability of Merck patent claims to pearlescent automotive coatings in post-grant review (PGR) proceedings. Although the Federal Circuit’s vacatur was based on substantial evidence review of the PTAB’s ruling, most of the appellate court’s opinion dealt with issues surrounding CQV’s Article III standing to appeal the PTAB’s adverse decision without itself facing patent infringement allegations.

IPWatchdog has learned that Farheena Rasheed has been asked by the United States Patent and Trademark Office (USPTO) to serve as one of the Acting Vice Chief Administrative Patent Judges (APJs) at the Patent Trial and Appeal Board (PTAB). Rasheed will immediately move to the PTAB. Until this move Rasheed served as Deputy General Counsel for Intellectual Property Law and Solicitor, which made her the chief litigator for the USPTO.  

This week on IPWatchdog Unleashed we present my fireside chat with Judge John Holcomb of the United States Federal District Court for the Central District of California, which took place March 4, 2025, at IPWatchdog LIVE. We began our conversation with the story about how John Holcomb the patent litigator went from private practice to becoming Judge John Holcomb of the U.S. Federal District Court for the Central District of California. And then we pivot to discussing patent litigation, the makeup of the Central District of California, advice for litigators, experts, the new Rule 702 and Daubert hearings, the role of the jury and how Judge Holcomb divides time for trial, as well as the number of patents and claims best suited for a single trial. As our conversation wound down, we ended on the topic of his judicial philosophy, where he tells the story of three umpires.

The Chief Judge of the U.S. Court of Appeals for the Federal Circuit (CAFC), Kimberly Moore, on Monday authored a short precedential decision vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that had found certain claims of Sisvel’s data transmission patent to be unpatentable.

Last week, oral hearings concluded at the UK Court of Appeal in the ongoing patent licensing dispute between wireless communication developer Optis and consumer device giant Apple over 4G standard essential patents (SEPs) owned by Optis and practiced by Apple devices. While a ruling is not expected for another month or so, several signs point to the Court of Appeal adjusting the May 2023 ruling by Mr Justice Marcus Smith at the High Court of England and Wales in a way that increases the damages for patent infringement that are ultimately awarded to Optis.

Last fall, we wrote about the United States Court of Appeals for the Federal Circuit’s (CAFC) decision in the matter of Telefonaktiebolaget LM Ericsson, Ericsson AB, Ericsson, Incl. v. Lenovo (United States), Inc. et. al., focusing, in particular, on the CAFC’s findings regarding interpretation and performance of the contractual obligation associated with the licensing declaration utilized by the European Telecommunications Standards Institute (ETSI) as set forth in the ETSI IPR Policy. Preceding the CAFC’s decision was an Initial Post-Hearing Brief submitted by the Office of Unfair Import Investigations (OUII) in the matter of Certain Mobile Phones, Components Thereof, and Products Containing Same. Like the CAFC case, this investigation before the United States International Trade Commission (ITC) was brought by Ericsson against Lenovo and involved cellular technology and licensing declarations submitted to ETSI. Despite the differing contexts (antisuit injunction vs. exclusion order), each broadly considers the appropriateness of injunctive relief in view of licensing declarations submitted to ETSI. As we explore below, there appears to be a considerable difference of opinion between the CAFC and ITC regarding interpretation and performance of such declarations. 

Patent Trial and Appeal Board (PTAB) docket entries indicate that the PTAB has invalidated all challenged claims of Moderna’s patents for its COVID-19 vaccine technology. The final written decisions remain sealed. U.S. Patent Nos. 10,933,127 (IPR2023-01359) and 10,702,600 (IPR2023-01358) are both titled “Betacoronavirus Mrna Vaccine.” Moderna competitors Pfizer and BioNTech filed two petitions for inter partes review (IPR) in August 2023 against certain claims of each of the patents, accusing Moderna of attempting “to coopt an entire field of mRNA technology.”

Today, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Odyssey Logistics & Technology Corp. v. Stewart affirming the Eastern District of Virginia’s dismissal of Odyssey Logistics’ Appointments Clause challenge to an examiner rejection of its patent application covering online systems for freight management. Although the Federal Circuit affirmed the dismissal on slightly different grounds, the appellate court found that the patent applicant did not respond to any change of law under Arthrex with the timeliness required to obtain any potential relief from the U.S. Patent and Trademark Office’s (USPTO) rejection of its patent application.

With Donald J. Trump back in the White House, intellectual property (IP) and innovation policy are poised for significant shifts. During IPWatchdog LIVE 2025, an expert panel titled “Inside the Beltway: The Future of IP and Innovation Policy,” featuring retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit (CAFC) Paul Michel, U.S. House Judiciary Chief Counsel for IP J. John Lee, Senate IP Director Peter-Anthony Pappas, and public policy expert Patrick Kilbride discussed what lies ahead for patent law, legislative reforms, and America’s ability to compete in a rapidly changing global landscape.