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Inter Partes Review (IPR) Proceeding Prior Art Corporate Counsel

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Holds Applicant Admitted Prior Art Cannot Form “Part of the Basis” of an IPR Ground, Reversing a PTAB Win for...

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more

A&O Shearman

Federal Circuit Affirms Patent Trial And Appeal Board Decision, Finding Claims Of Patents Covering CRISPR Guide RNA Technology As...

A&O Shearman on

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

Volpe Koenig

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

Volpe Koenig on

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

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

2024 PTAB Year in Review: Analysis & Trends

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

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their...more

Haug Partners LLP

Federal Circuit Underscores the Importance of Complying With PTAB Procedural Rules in Parus Holdings v. Google

Haug Partners LLP on

The Federal Circuit’s recent precedential decision in Parus Holdings v. Google underscores the importance of complying with the PTAB’s procedural rules in an IPR and the potentially serious consequences of not doing so. The...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Holds Priority Documents Lack Direction to Support Claims

On March 6, in Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) invalidating claims of the...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Nixes Admitted Prior Art as Basis for IPR

On February 1, in Qualcomm Inc. v. Apple Inc., the Federal Circuit held that Apple could not base an inter partes review (IPR) challenge of a Qualcomm patent solely on “applicant admitted prior art” (AAPA) found in the patent...more

Fitch, Even, Tabin & Flannery LLP

Indefiniteness Does Not Necessarily End PTAB’s Patentability Inquiry

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...more

Jones Day

Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

Jones Day on

The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more

Morgan Lewis

2020 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

Morgan Lewis on

As of 2020, post grant proceedings have been in use for eight years. Designed as an alternative to district court litigation post grant proceedings have offered litigants a faster and more cost effective forum for resolving...more

Haug Partners LLP

How Different Claim Construction Standards Can Ultimately Determine the Validity of a Patent

Haug Partners LLP on

Recently, the Federal Circuit issued a decision in Immunex Corp. v. Sanofi-Aventis U.S. LLC addressing the different claim construction standards used by the Patent Trial and Appeal Board (“PTAB”) (broadest reasonable...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Ruling Highlights a Petitioner’s Burden for Qualifying an Internet Screenshot as a “Printed Publication”

In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted...more

Miller Canfield

IP Litigation Quarterly Update

Miller Canfield on

Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law. In this first edition covering the first quarter of 2020, the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

BakerHostetler

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

BakerHostetler on

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more

Foley & Lardner LLP

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

Foley & Lardner LLP on

On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

Morgan Lewis

Federal Circuit Tosses PTAB Decision

Morgan Lewis on

The Federal Circuit vacates a decision by the PTAB for relying on facts raised for the first time at oral argument. Executive Summary - On March 15, 2016, the US Court of Appeals for the Federal Circuit vacated...more

Fish & Richardson

Use of the Wayback Machine in IPR Is Under Attack

Fish & Richardson on

One source of prior art commonly relied on in inter partes review proceedings is the “Wayback Machine.” The Wayback Machine is an internet archive of webpages that are browsed by crawler programs and then stored and preserved...more

Robins Kaplan LLP

Is The Deck Stacked Against Patent Owners In The PTAB?

Robins Kaplan LLP on

Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

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