Written By: John Kirkpatrick

Appellant Achates argues that the Patent Trial and Appeal Board erred when the Board instituted an inter partes review (IPR) of Achates’ patents because Appellee Apple’s petitions for the review were time-barred under 35 U.S.C. § 315(b).  The Federal Circuit (Prost, Lourie, and LINN) concludes that it lacks jurisdiction to hear Achates’ appeal because “the Board’s determinations to institute IPRs are final and non-appealable under 35 U.S.C. § 314(d).”


Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,707 B1

Method and System for Generating a Smart Time-Lapse Video Clip

Inventors: Jason N. Laska, San Francisco, CA (US); Greg R. Nelson, San Bruno, CA (US); Greg Duffy, San Francisco, CA (US); Hiro Mitsuji, San Francisco, CA (US); Lawrence W. Neal, Oakland, CA (US); and Cameron Hill, San Francisco, CA (US)

Assignee: Google Inc.


Written By: David Youngkin

Spectrum appealed the district court’s holding that U.S. Patent 6,500,829 (“the ‘829 patent’”) was invalid as obvious and that claims were not infringed by Sandoz’s Abbreviated New Drug Application (“ANDA”).  The Federal Circuit affirmed the district court’s holding that a substantially pure compound would have been obvious over both the 50/50 mixture and pure isomer.  Additionally the Federal Circuit affirmed the district court’s decision that held Spectrum could not rely on the doctrine of equivalents because of prosecution history estopple.

Written By: Roland Casillas, Web and Blog Editor

Patent No. U.S. 9,170,645 B2

Publication No. U.S. 2012/0293406 A1

Method and Apparatus for Processing Input in Mobile Terminal

Inventors: Hyung-Kil Park, Gyeonggi-do (KR); and Min-Hwan Seo, Gyeonggi-do (KR)

Assignee: Samsung Electronics, Co., Ltd.

Written By: David Youngkin

The phone wars between Apple and Samsung continue, with Apple seeking a permanent injunction barring Samsung from implementing selected features on Samsung products.   Recently, Apple appealed the district court’s denial of its request for a permanent injunction. In Apple Inc., v. Samsung Electronics Co., Ltd., a divided panel for the Federal Circuit (Judge Moore, concurring Judge Reyna, and dissenting Chief Judge Prost) found that the lower court erred in its denial, vacated the decision, and remanded the case back to the lower court.

IP Alert: Federal Circuit Upholds Expert Apportionment Methodology to Prove Reasonable Royalty Damages for Individual Features of Complex Technology

--Written by Fitch Even attorneys Steven C. Schroer and Christian C. Damon

On September 21, 2015, in Summit 6, LLC v. Samsung Electronics Company, Ltd., the Court of Appeals for the Federal Circuit added a new chapter to rapidly developing jurisprudence addressing the kinds of evidence admissible to prove the reasonable royalty value of patents drawn to individual features of a multi-element technology. Explaining its holding by reference to long-established Georgia-Pacific principles, the court upheld a jury verdict awarding a royalty based on opinions of a damages expert whose methodology rested on the premise that a “feature’s use is proportional to its value” and allocating infringing versus non-infringing use of the multi-element technology. The court affirmed the admission into evidence of the expert’s opinions based on usage surveys conducted by the infringer in the ordinary course of its business. In doing so, the Federal Circuit liberalized the admission of expert testimony that relies “on a methodology not previously used or published in peer-reviewed journals.” The court held that such opinions do not per se run afoul of guidelines established in Daubert v. Merrell Dow Pharmaceuticals. Finally, the Federal Circuit determined that based on the particular facts present and the manner the issue was presented at trial, a jury’s lump-sum damages award could compensate the patent owner for past and future damages and that a going-forward royalty was unnecessary.

Coming soon. If anyone has come across an interesting or innovative issued patent, new or old, and would like the IP community to know about it, please contact the Web and Blog Editor.


Written by: Justin Blaufeld

The Federal Circuit holds that in order to rely on the provisional filing date of a prior art patent under 35 U.S.C. § 102(e), one must prove that the prior art patent is actually entitled to the benefit of priority, in addition to showing that the provisional application anticipates the patent being challenged.

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