Federal Circuit Reaffirms the Board’s Decision to Terminate a Reexamination As to Only Litigated Claims in a Civil Action

IN RE AFFINITY LABS OF TEXAS, LLC: May 5, 2017. Before Taranto, Chen, Stoll. Takeaway: The estoppel provision under 35 U.S.C. 317(b) does not extend to all parties and all claims, but rather only to an inter partes requester that was a party to the civil action (or its privies) …

Shoulder Replacement Apparatus Not Anticipated by Prior Art Requiring Modification to Satisfy Claim Language

IN RE: CHUDIK: March 27, 2017. Before Dyk, Reyna, and Stoll. Takeaway: A prior art reference that must be distorted from its obvious design does not anticipate claims. Procedural Posture: In an appeal from the USPTO where the PTAB affirmed the examiner’s rejection of Chudik’s claims as anticipated by two …

A Prior Art Reference That Merely Suggests the Claimed Subject Matter Does Not Anticipate the Claims

Eli Lilly v. Los Angeles Biomedical (2016-1547), February 28, 2017.  Before Judges Newman, Bryson, and Moore. Takeaway: In order to anticipate claims directed toward a daily treatment regime, a reference must do more than merely suggest the claimed subject matter. Procedural Posture: Los Angeles Biomedical filed a patent infringement suit …

Federal Circuit Determines That the PTAB Erred in Sustaining an Examiner’s Rejection of a Claim for Being Anticipated by Prior Art

IN RE: STEVEN C. CHUDIK, 2016-1487 (Fed. Cir. January 9, 2017) (non-precedential). On appeal from PTAB.  Before Prost, Clevenger, and Reyna. Procedural Posture: A patent claim was rejected as anticipated by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) . Finding that the applicant failed to rebut the examiner’s …

Prior Art Disclosing a “Chain of Stores” Does Not Anticipate a Patent Limited to a “Single Merchant”

D’AGOSTINO v. MASTERCARD INTERNATIONAL: Dec. 22, 2016. Before Taranto, Linn, and Stoll. Takeaway: A patent with a “single merchant” limitation is not anticipated by a prior art reference that disclosed an embodiment directed to a “chain of stores.” Procedural Posture: On appeal from the PTAB’s decision in an IPR finding …