A Generic Motivation Is Still a Motivation In Intel Corporation v. Qualcomm Incorporated, Appeal No. 20-1664, the Federal Circuit held that a “generic” motivation to combine that has broad appeal or applicability is not deficient so long as it is supported by more than conclusory expert testimony. Intel requested inter... read more →

Contributors: Akin Gump Strauss Hauer & Feld LLP Silence May Support Negative Claim Limitation In Novartis Pharmaceuticals v. Accord Healthcare Inc. Appeal No. 21-1070, the Federal Circuit held that a patent application that was silent about a “loading dose” of a drug provided written description support for a negative claim... read more →

Indefiniteness Is Not Determined by the Claim Language Alone In Nature Simulation Systems Inc. v. Autodesk, Inc. Appeal No. 20-2257, the Federal Circuit held that it was improper for the district court to find patent claims indefinite without considering the specification and prosecution history. Nature Simulation Systems, Inc. (“NSS”) sued... read more →

Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on the meaning of a term in settlement negotiations may create a binding, enforceable agreement as to that term, despite... read more →

Intrinsic Record Thwarts Theory of Interchangeability In Apple Inc. v. Wi-Lan Inc. Appeal No. 20-2011, the Federal Circuit held that construing a broad claim term to be re-defined as a disclosed species on a theory that the terms are interchangeable requires that the intrinsic record clearly manifest a departure from... read more →

Federal Circuit Overrules Shaw and Broadens IPR Estoppel in District Court Proceedings  In California Institute of Technology v. Broadcom Inc. and Apple Inc. Appeal No. 20-2222, the Federal Circuit held that IPR estoppel in district court proceedings applies to all claims and grounds which reasonably could have been included in... read more →

PTO Director’s Estoppel Decision Ending Reexam Is Subject to Judicial Review In Alarm.Com Inc. v. Hirshfeld Appeal No. 21-2102, the Federal Circuit held that the Administrative Procedure Act (APA) permits judicial review of a Patent Office decision vacating an ex parte reexamination based on estoppel. Alarm.com petitioned for inter partes... read more →

When an Unmet Need May Not Be Enough In Adapt Pharma Operations Ltd. v. Teva Pharms. USA, Inc. Appeal No. 21-1649, the Federal Circuit held that recent attempts by competitors to achieve patented technology, both before and after the patent’s publication, were not strong enough objective indicia of nonobviousness. Adapt... read more →

Effects of Proximity, Plurals, and Passive Voice for Claim Construction In Apple Inc. v. Mph Technologies Oy, Appeal No. 21-1532, the Federal Circuit held that the proximity of concepts in a claim may link the concepts together and affect the plain meaning of the claim. Apple petitioned for inter partes... read more →

Courts Must Properly Apply the Presumption in the Means-Plus-Function Analysis In Dyfan, LLC v. Target Corporation, Appeal No. 21-1725, the Federal Circuit held that where a claim does not use the word “means” and the record contains unrebutted expert testimony that a person of ordinary skill in the art would... read more →