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Category Archives: Federal Circuit Decisions


Fed Circuit: Patent Application is Prior Art Before Publication

In a significant ruling, the Federal Circuit has clarified the status of patent applications in the realm of intellectual property law, asserting that a patent application can be considered prior art even before its publication. This decision has important implications for inventors, businesses, and the overall landscape of patent law. Understanding how a patent application functions as prior art is crucial for navigating the complexities of patentability and innovation. In this blog post, we will explore the details of this ruling, its impact on patent strategy, and what it means for the future of intellectual property rights, particularly regarding the patent application as prior art.

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Home Isn’t Where the Servers Are: Federal Circuit Holds that the Presence of Google Servers Does Not Establish Venue

In Re: Google LLC, Appeal No. 2019-126 (Fed. Cir. Feb. 13, 2020)

The Federal Circuit has ordered the U.S. District Court for the Eastern District of Texas to dismiss or transfer Super Interconnect Techs. LLC v. Google LLC, No. 2:18-CV-00463-JRG for lack of venue, because Google LLC, which contracted with internet service providers (ISPs) within the district to host its servers, had no employee or agent regularly conducting its business there.

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Indefinitely Not: Federal Circuit Rules that the PTAB Cannot Cancel Claims for Indefiniteness During an IPR

Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal Nos. 2019-1169, 2019-1260 (Fed. Cir. Feb. 4, 2020)

The Federal Circuit has held that the Patent Trial and Appeal Board may not cancel claims as indefinite in an IPR proceeding.

In 2016, Prisua Engineering Corp. sued Samsung Electronics America, Inc. and other Samsung entities for infringement of U.S. Patent No. 8,650,591 (“Video Enabled Digital Devices for Embedding User Data in Interactive Applications”). Samsung then petitioned the PTAB for inter partes review of the ‘591 patent, asserting that claims 1–4, 8, and 11—which are directed to methods and apparatuses for “generating a displayable edited video data stream from an original video data stream”—were unpatentable.

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No Do-Overs: Federal Circuit Denies Unsuccessful IPR Petitioner’s Request for a New Hearing in Light of Arthrex

Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir. Jan. 28, 2020)

The Federal Circuit has held that a party that petitioned for inter partes review before the Patent Trial Appeal Board and subsequently obtained an unfavorable ruling cannot now invoke Arthrex, Inc. v. Smith & Nephew, Inc. to vacate and remand the Board’s decision for a new hearing before a differently constituted panel.

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Federal Circuit Holds That Names and Logos Matter in the Design-Infringement Analysis

Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., Appeal No. 2018-1329 (Fed. Cir. Nov. 13, 2019)

Columbia Sportswear is the owner of U.S. Patent D657,093 (“the ‘093 patent”), a design patent directed at the “ornamental design of a heat reflective material.” The claimed design is a wave pattern used in sleeping bags, boots, pants, gloves, and jackets. Columbia sued Seirus Innovative Accessories in the District of Oregon for infringement of the’093 patent and a utility patent. Seirus makes outdoor apparel products lined with its HeatWave fabric, and its design features waves of varying pattern and orientation, interrupted by repeated use of the “Seirus” logo. Continue reading…