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Intellectual Property Protection United States Patent and Trademark Office Patent Infringement

Sheppard Mullin Richter & Hampton LLP

Lexicography: Clear And Unequivocal

This Federal Circuit opinion analyzes lexicography in the context of claim construction. Alnylam Pharmaceuticals owns U.S. Patent Nos. 11,246,933 (parent) and 11,382,979 (child). These patents relate to biodegradable...more

Jones Day

Discretionary Denial Where Inventors Petitioned for Unpatentability

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Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...more

Proskauer - The Patent Playbook

PTO Creates New Expectations Regarding Discretionary Denials

On the heels of the U.S. Patent and Trademark Office Acting Director’s recent decision to deny institution of iRhythm Technologies’ inter partes review petition, the PTO has now issued additional decisions clarifying the role...more

Jones Day

Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation

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In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors, despite Petitioner’s...more

Ballard Spahr LLP

Government Signals Potential Shift Toward Preliminary Injunctions in Patent Infringement Cases

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In a recent patent case, the U.S. government urged a Texas federal court to give greater weight to the difficulty of calculating damages as a basis for finding irreparable harm. If embraced by courts, the move could give...more

Jones Day

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

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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

Jones Day

USPTO Acting Director Denies IPR Institution Based on "Settled Expectations"

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Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR") proceedings are now bifurcated, consisting of a first phase in which the director considers...more

Volpe Koenig

“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File

Volpe Koenig on

When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408  Paper 21, much of the commentary focused on the result....more

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

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Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Jones Day

April 2025 Institution Rate Slips Below 45 Percent

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The PTAB has published its monthly statistics wrap up for April 2025. As expected, those statistics show a significant decline in the institution rate compared to the first six months of the fiscal year. In those first six...more

Jones Day

Acting Director Releases First Decisions Under New Bifurcated Process

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On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more

Jones Day

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

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USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...more

McDonnell Boehnen Hulbert & Berghoff LLP

PocketPair Provides Post on Permutations to Palworld based on Pokémon Patents

I have previously written extensively on the ongoing legal battle between Nintendo / The Pokémon Company (referred to herein collectively as simply "Nintendo") and PocketPair over PocketPair's popular video game Palworld....more

Venable LLP

Spotlight On: Lantus® / Lantus® SoloSTAR® (insulin glargine recombinant) / Basaglar® (insulin glargine) / Semglee® (insulin...

Venable LLP on

Insulin Glargine Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

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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

Baker Botts L.L.P.

First Quarter 2025 Federal Circuit Law Snapshot

Baker Botts L.L.P. on

Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Riggs

In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025) Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to...more

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

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A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Affirms PTAB’s Analysis Finding Product-by-Process Claim Narrowed During Prosecution Valid Over Prior Art

In a precedential opinion issued on March 4, 2025, in Restem, LLC v. Jadi Cell, LLC, No, 23-2054, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB’s claim construction and ruling that product-by-process...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

ArentFox Schiff

Federal Circuit Refuses to Extend IPR Estoppel to Unadjudicated Patent Claims

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In Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025), the Federal Circuit held that patentees in district court are not collaterally estopped from asserting claims that were not immaterially different...more

Jones Day

Federal Circuit Rules That Order Of Steps Sometimes Does Matter

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Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Apple Inc. v. Gesture Technology Partners

Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025) Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based...more

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