Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Podcast: IP(DC): Inside Patent Reform Efforts, Anticipated Federal Circuit Appeals, and Patent Cases of the Upcoming Supreme Court Term
Is the Patent Litigation Boom Coming to an End?
A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more
In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more
On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more
Under Dickinson v. Zurko courts (specifically, the Federal Circuit) should defer to factual determinations by administrative agencies like the U.S. Patent and Trademark Office unless they are not supported by substantial...more
On July 31, the US Patent and Trademark Office (USPTO) issued a new memorandum announcing that it will begin enforcing 37 C.F.R. § 42.104(b)(4) that requires petitioners in inter partes review (IPR) proceeding to “specify...more
In Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Appeal No. 25-1228, The Federal Circuit found that claims reciting a dosing regimen with unequal loading doses were not obvious and that a presumption of...more
Jiaxing Super Lighting Electric Appliance, Co. Ltd. v. CH Lighting Technology Co., Ltd., Appeal No. 2023-1715 (Fed. Cir. July 28, 2025) In our Case of the Week, the Federal Circuit addressed three issues arising from a...more
SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. - Before Lourie, Dyk, and Cunningham. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. In inter partes review...more
The US Court of Appeals for the Federal Circuit clarified that while applicant-admitted prior art (AAPA) may be cited as evidence of general background knowledge in inter partes review (IPR) proceedings, it cannot serve as...more
Eye Therapies, LLC v. Slayback Pharma, LLC, No. 2023-2173 (Fed. Cir. (PTAB) June 30, 2025). Opinion by Scarsi, joined by Taranto and Stoll. Eye Therapies owns a patent that claims a method for reducing eye redness...more
On June 30, 2025, the Federal Circuit issued a precedential decision in Eye Therapies, LLC v. Slayback Pharma, LLC, reversing the Patent Trial and Appeal Board’s (PTAB’s) claim construction of the phrase “consisting...more
Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure...more
The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s...more
INGENICO INC. v. IOENGINE, LLC Before Dyk, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware. IPR estoppel does not preclude reliance on public-use evidence that is substantively...more
In this episode of the Post-Grant Podcast, Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and...more
AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. - Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Obviousness does not require all claimed limitations to be expressly disclosed in a primary prior...more
Ancora Technologies, Inc. v. Roku, Inc., et al., Nos. 2023-1674, -1701 (Fed. Cir. (PTAB) June 16, 2025). Per curiam opinion, before Louri, Reyna, and Hughes. Ancora owns a patent directed to restricting unauthorized use of...more
Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more
Optis Cellular Technology, LLC v. Apple Inc., Appeal Nos. 2022-1904, -1925 (Fed. Cir. June 16, 2025) In this week’s Case of the Week, the Court of Appeals for the Federal Circuit vacated a jury decision awarding...more
On June 16, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded two final written decisions by the Patent Trial and Appeal Board (“PTAB”) that found several claims of Ancora Technologies,...more
Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., No. 2023-2267 (Fed. Cir. (D. Del.) June 9, 2025). Opinion by Lourie, joined by Dyk and Reyna....more
In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was...more
On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more
Precedential and Key Federal Circuit Opinions - ALNYLAM PHARMACEUTICALS, INC. v. MODERNA, INC. [OPINION] (2023-2357, 06/04/2025) (Taranto, Chen, Hughes) - Taranto, J. The Court affirmed the district court’s claim...more
An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko. In that case the Court held that the Federal Circuit was bound by the...more