INCEPT LLC v. PALETTE LIFE SCIENCES, INC.

2021-2063, 2021-2065.

77 F.4th 1366 (2023)

INCEPT LLC, Appellant v. PALETTE LIFE SCIENCES, INC., Appellee. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Intervenor.

United States Court of Appeals, Federal Circuit.

Decided: August 16, 2023.


Attorney(s) appearing for the Case

Timothy E. Grimsrud , Faegre Drinker Biddle & Reath LLP, Minneapolis, MN, argued for appellant. Also represented by Lauren J.F. Barta ; Christopher J. Burrell , Bethany N. Mihalik , Washington, DC.

Tung on Kong , Wilson, Sonsini, Goodrich & Rosati, PC, San Francisco, CA, argued for appellee. Also represented by Tasha Thomas , Richard Torczon , Washington, DC; Lorelei Westin , San Diego, CA.

Mary L. Kelly , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by Peter J. Ayers , Daniel Kazhdan , Thomas W. Krause , Farheena Yasmeen Rasheed .

Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge Newman.


Incept LLC owns U.S. Patent Nos. 8,257,723 ("the '723 patent") and 7,744,913 ("the '913 patent"). It now appeals from two final written decisions of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") holding the claims of the '723 patent and the '913 patent unpatentable as anticipated by, or obvious in view of, the asserted prior art. For the following reasons, we affirm.

BACKGROUND

I

The '723 and '913 patents relate...

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