News & Analysis as of July 16, 2025

Appeals

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

2024 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/4/2025

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

Neck or Nothing? “Quotation” Invalidates On-Sale Bar

McDermott Will & Emery on 12/19/2024

The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act...more

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

McDermott Will & Emery on 9/7/2023

US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...more

No First Place Trophy Here: Public Demo at Trade Show Found Invalidating

McDermott Will & Emery on 2/24/2023

Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § 102(b), the US Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate a patent because the patent owner’s...more

No Due Process Violation When New Panel Hears Substantive Arguments

McDermott Will & Emery on 10/8/2020

Affirming a Patent Trial and Appeal Board (Board) non-obviousness determination, the US Court of Appeals for the Federal Circuit found that the Board did not abuse its discretion in sanctioning a patent owner who engaged in...more

Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out

McDermott Will & Emery on 8/13/2020

Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those...more

U.S. Court Of Appeals For The Federal Circuit Has Held That Neither State Agencies Nor Indian Tribes Enjoy Sovereign Immunity,...

Ladas & Parry LLP on 7/16/2019

On July 20, 2018 in Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore and Reyna JJ) held that Native American (“Indian”) Tribes do...more

PTAB Strategies and Insights - December 2018: Federal Circuit Holds No Assignor Estoppel in AIA Proceedings

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 1/2/2019

Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more

The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB

Knobbe Martens on 3/8/2018

The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. See Allergan and the Saint Regis Mohawk Tribe...more

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

Jones Day on 7/4/2017

On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

Fenwick & West LLP on 1/6/2017

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

McDermott Will & Emery on 9/2/2016

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

Foley & Lardner LLP on 8/16/2016

In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more

No Rehearing on Dual Use PTAB Panels

McDermott Will & Emery on 7/30/2016

Confirming that the same panel of judges at the Patent Trial and Appeal Board (PTAB or Board) has the authority to institute America Invents Act (AIA) reviews and make a final determination on the merits, the US Court of...more

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