On July 29, 2025, Chief Administrative Patent Judge Scott R. Boalick circulated a memorandum to Members of the PTAB entitled “Final Written Decision Procedures for AIA Trial Proceedings.” ...more
9/8/2025
/ Appeals ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more
8/11/2025
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....more
8/6/2025
/ Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Trial Practice Guidance ,
USPTO ,
Vacated
The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more
7/28/2025
/ Evidence ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
USPTO
As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the...more
A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more
6/27/2025
/ Appeals ,
Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Authority ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more
5/22/2025
/ Administrative Law Judge (ALJ) ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Statutory Interpretation
In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more
5/16/2025
/ CAFC ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
5/2/2025
/ Claim Construction ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more
4/28/2025
/ Apple ,
Claim Construction ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via...more
4/11/2025
/ Appeals ,
Appellate Courts ,
Collateral Estoppel ,
Computer-Related Inventions ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Reversal
Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more
The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more
3/10/2025
/ Appeals ,
Article III ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more
1/23/2025
/ Appeals ,
Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Trial Practice Guidance ,
USPTO
On September 24, 2024, the PTAB denied institution of a post-grant review proceeding initiated by Inari Agriculture, Inc. (Petitioner) against Pioneer Hi-Bred International, Inc. (Patent Owner). The patent at issue was U.S....more
Recently, the Patent Trial and Appeals Board (“PTAB”) released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). ...more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
10/27/2023
/ Estoppel ,
Final Written Decisions ,
Gaming ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Interference Claims ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art ,
Software ,
USPTO ,
Zynga
On May 12, 2023, the Intel v. VLSI chronicle continued as the PTAB issued a final written decision holding that all of the challenged claims of VLSI’s U.S. Patent No. 7,725,759 (“the ’759 patent”) were unpatentable as...more
A PTAB panel recently denied Linquet Technologies, Inc.’s (“Patent Owner”) motion to dismiss an IPR proceeding as moot despite a district court having already invalidated the patent because the final written decision had...more
In LG Electronics v. Immervision, the Federal Circuit clarified the standard for evaluating whether a prior art reference includes an obvious typographical error. See 39 F.4th 1364, 1365 (Fed. Cir. 2022). Under this...more
In Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk Healthcare AG, the Patent Trial and Appeal Board (PTAB) denied the Petitioner’s motion to terminate the inter partes review (IPR) and to...more
In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more
A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more
Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow. While the institution itself is not out of the ordinary—the...more
12/8/2021
/ Crowdsourcing ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art