Thus #FedCir makes precedential its conclusion in VirnetX (2019 non-prec). Patentee can’t tailor/“shapeshift” claim meaning through argument in IPR; instead we have amendment. NB: disclaimer made in IPR doesn’t bind that PTAB, but IS binding in *later* proceedings (PTO or DCt). twitter.com/patent_maven/s…

Cupp v Trend 11/16 #FedCir affirms s103 unpatentability of C’s 3 patents. “Security system processor” is “different” from phone processor but need not be “remote” (could be in single device). *New precedent*: C’s contrary disclaimer in the IPR did not bind PTAB; properly ignored.

But PTAB erred in construing “used for electrical interconnection” too broadly in method claim 20. Interconnect layers must at least be capable of carrying electricity. Preferable interpretation gives meaning to all terms in claim. #FedCir (WB) reverses/remands as to claim 20.

VLSI v Intel 11/15 #FedCir affirms s103 unpatentability of V’s apparatus claims. PTAB correctly interpreted “force region” of integrated circuit more broadly to include wire bonding as well as flip chip bonding. PTAB considered DCt’s interpretation but properly went beyond it.

Thus #FedCir finds no Due Process or APA violation where some of patentee's proposed claim amendments (e.g. changing “pump housing” to “valve enclosure”) were "non-substantive" & made “to achieve consistency and accuracy in terminology and phrasing” throughout its patent family. twitter.com/patent_maven/s…

AmericanNatl v SleepNumber 11/14 #FedCir agrees that PTAB in IPR can consider proposed substitute claims that both overcome the instituted ground & correct other "perceived issues" e.g. potential s101 or s112 problems, so long as claim scope not enlarged & no new matter intro'd.

#SCOTUS will review an important biotech #patent case, Amgen v. Sanofi. For a backgrounder on the case and the #FedCir's requirement for "full scope enablement," see Section 4.02[C] of Mueller on Patent Law (digital version), available at Fastcase.com.

In re Apple 11/8 #FedCir mandamuses WDTx (Albright J), vacating scheduling order. "Clear abuse of discretion" to delay decision on A's venue transfer motion for 1 yr+, until full fact discovery & re-briefing. "[C]learly arbitrary refusal to act" on a long-pending transfer motion.

#SCOTUS today granted review of this decision. twitter.com/patent_maven/s…

Uniloc2017 v Google 11/4 #FedCir reverses DCt ruling that U lacked standing to sue G. U had given FortressCredit (financier) an “irrevocable” right to sub-license. But Termination Agrmt cancelled F’s license before suit. “Irrevocable” doesn’t bar termination by mutual agreement.

Finjan v ESET 11/1/22 #FedCir reverses DCt claim construction that limited "downloadable" to "small" programs. Using "small" in earlier application doesn't reinstate it in later family patents that purposely deleted "small," even though they incorporated earlier app by reference.

ABCCorp I v P'ship 10/28/22 #FedCir (Dyk J) reverses 2021 prelim injunction; DCt mis-analyzed design patent infringement. Per Egyptian Goddess (2008 en banc), prominent hourglass shape of A's hoverboard design cannot be basis for substantial similarity when prior art showed same.

@design_law @ARSommerEsq

@design_law @ARSommerEsq There’s a goldmine of Judge Rich’s handwritten notations like this one in the reporters at the #FedCir library (my photo from 2013):

IBM v Zillow 10/17 #FedCir 2-1 affirms R12c dismissal bcz claimed method of displaying data in layers is not s101 eligible. Abstract idea of displaying visual information. Result-based functional steps; no technical improvement. Dissent (KS): allegations plausible for 2 claims.

Thanks @Patently0 for highlighting that yesterday's modified majority opinion in NatureSim deleted discussion of deference to PTO examiners, citing Tinnus Enters. (2018 non-prec) (presuming that exr would not introduce an indefinite term when amending claim to make allowable). twitter.com/patent_maven/s…

NatureSimulation v AutoDesk 10/17/22 #FedCir majority (PN) reissues & modifies its 1/27/22 opinion after A's petition for rehearing, again reversing NDCal and upholding CAD invention using "modified Watson method" as 112/2 definite. Dissent (TD) says "manifestly incorrect." twitter.com/patent_maven/s…

Weisner v Google 10/13 #FedCir reverses DCt ineligibility dismissal as to claims of 2 out of 4 patents bcz they “add significantly more to th[e] abstract idea [improving search results w/ travel histories] by implementing a specific solution to a problem rooted in computer tech.”

MacArthur Genius grant awarded to “Priti Krishtel … a health justice lawyer exposing the inequities in the patent system to increase access to affordable, life-saving medications on a global scale.” macfound.org/fellows/class-…

The hotel room we got on our get-a-way-from-work vacation 😝