IP Newsflash

The Federal Circuit recently affirmed a Patent Trial and Appeal Board decision finding claims that had been subject to an ex parte reexamination unpatentable. As a threshold issue, the court held that IPR estoppel under 35 USC § 315(e)(1) does not apply to ongoing ex parte reexaminations. Accordingly, the Patent Office did not err in continuing the reexamination after issuing final written decisions in co-pending IPRs.

The Federal Circuit recently denied a petition for a writ of mandamus that challenged the PTO Director’s reliance on “settled expectations” to discretionarily deny two inter partes review (IPR) petitions. In so doing, the court explained that, while it was not deciding whether the Director’s use of “settled expectations” was correct, the petitioner’s arguments about what factors the Director may consider when deciding whether to institute an IPR or post-grant review (PGR) are not generally reviewable and did not provide sufficient basis for mandamus review here.

The Federal Circuit recently held that a patentee acted as its own lexicographer to define a claim term even though it did not explicitly define the term. Rather, because the patentee consistently and clearly used two terms interchangeably to describe the same structural feature and did so in all of the embodiments in which the feature appeared, the patentee impliedly gave the term its own, unique definition.

The Federal Circuit recently held an asserted patent was not entitled to its priority date because the priority application lacked written description support for the asserted claims. In so doing, the court explained that broad disclosures that do not provide reasonably specific support for narrower claims do not meet the written description requirement. The court also considered whether the inventor’s testimony showed they possessed the full scope of the claimed genus at the priority date or whether it was more likely the inventors first became aware of the claimed embodiments from public disclosures of the accused product.

The Ninth Circuit recently reversed a district court’s decision to strike a plaintiff’s trade secret claims under the Defend Trade Secrets Act (DTSA) at the discovery stage. In doing so, the Ninth Circuit made clear that under the DTSA, whether a party defined their trade secret with sufficient particularity is a question of fact that generally does not lend itself to resolution in the absence of at least some discovery. This ruling contrasts with the California Uniform Trade Secrets Act (CUTSA), which requires a party to define their trade secrets with reasonable particularity before commencing discovery.

The Federal Circuit recently vacated a summary judgment ruling of invalidity, holding that the district court erred in applying preclusive effect to the Patent Trial and Appeal Board’s unpatentability findings regarding other claims in the same patent. In doing so, the Federal Circuit reiterated that issue preclusion does not apply where the prior factual determinations were made under a lower standard of proof.

The Federal Circuit recently clarified the requirement for work disclosed in a reference to qualify as “by another” under pre-AIA Sections 102(a) and (e), holding that there must be complete inventive identity between the information disclosed in the asserted reference and the inventors named on the relevant patent. 

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.