News & Analysis as of

Patent Trial and Appeal Board Claim Construction Corporate Counsel

A&O Shearman

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

A&O Shearman on

On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

Dinsmore & Shohl LLP on

The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Waiver Regulations for Rehearings Before the PTAB

In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), the case addresses whether failure to re-raise arguments in a request for rehearing before the Patent Trial and Appeals Board (“PTAB”) forfeits...more

Sheppard Mullin Richter & Hampton LLP

The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”

This decision emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B)....more

Goodwin

USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Goodwin on

​​​​​​​Director Katherine Vidal of the U.S. Patent and Trademark Office (“USPTO”) issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before 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

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

Kilpatrick

The Federal Circuit Further Defines the Contours of the APA’s Procedural Safeguards at the PTAB

Kilpatrick on

In a recent decision, the Federal Circuit held that the PTAB violated the Administrative Procedures Act (“APA”) by adopting in its final written decision a claim construction that neither party had proposed. In Qualcomm Inc....more

McDermott Will & Emery

What You Say Can and Will be Used Against You – Prosecution History and Prior Infringement Arguments

McDermott Will & Emery on

Noting patent owner’s prior litigation statements, the US Court of Appeals for the Federal Circuit upheld a district court ruling that a clear and unmistakable disclaimer in the prosecution history affected claim construction...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...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

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

2019 PTAB Year in Review: Analysis & Trends

Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more

McDonnell Boehnen Hulbert & Berghoff LLP

2019 Patent Trial and Appeal Board Key Practice Updates: A Year in Review

2019 has been an active year for procedural changes in the Patent Trial and Appeal Board (“PTAB”). These changes include not only the PTAB’s issuance of a Trial Practice Guide July 2019 Update, but also a number of...more

Kilpatrick

PTAB Issues 2nd Update to Trial Practice Guide—Access the Complete Trial Practice Guide, including all revisions to date, here!

Kilpatrick on

Yesterday (July 15th), the PTAB published a second update to its Trial Practice Guide. This second update is twice as long as the August 2018 update and relies extensively on the many recently-designated precedential and...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

Jones Day

Key Patent Decisions of 2018

Jones Day on

In another noteworthy year for patent law, the U.S. Supreme Court and the Federal Circuit issued several decisions that altered the patent landscape, including three Supreme Court decisions and three en banc Federal Circuit...more

Troutman Pepper Locke

Year In Review: Changes In PTAB Practice In 2018

Troutman Pepper Locke on

A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office. ...more

Jones Day

When Is A Timely IPR Petition Not Timely Enough?

Jones Day on

A petition for inter partes review is timely if it is filed within one year of service of a complaint alleging infringement of the challenged patent on the petitioner, real party in interest, or privy of the petitioner. 35...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Mylan v. Aurobindo the Circuit affirms the grant of a preliminary injunction based upon the infringement of one of the three patents in suit. However, the panel reverses the injunction as to the other two patents based on...more

Jones Day

Internet Advertising Claims Deemed Not Eligible for Covered Business Method Patent Review

Jones Day on

In a decision dated February 27, 2017, the Board denied institution of Google Inc.’s petition for Covered Business Method Patent Review of claims 20, 21, 23–26, 28, and 29 of U.S. Patent No. 6,128,651 (“the ’651 patent”)...more

Weintraub Tobin

Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of...

Weintraub Tobin on

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal...more

Foley & Lardner LLP

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

Foley & Lardner LLP on

Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

BakerHostetler

Amended PTAB Rules to Take Effect on May 2, 2016

BakerHostetler on

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will...more

Womble Bond Dickinson

USPTO to Implement Significant Rule Changes for AIA Trial Proceedings Impacting Both Petitioners and Patent Owners

Womble Bond Dickinson on

The United States Patent and Trademark Office (USPTO) has released the final set of the latest round of changes to the rules governing inter partes review, post grant review, and other AIA trial proceedings before the Patent...more

Goodwin

New PTAB Trial Rules Will Apply to AIA Proceedings Effective May 2

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Early last year, the USPTO released a set of “quick fix” changes to AIA trial procedures before the Patent Trial and Appeal Board (PTAB). On August 20, 2015, the USPTO proposed a second set of rule changes that addressed more...more

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