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Patent Trial and Appeal Board Evidence

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

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The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more

King & Spalding

USPTO Acting Director Stewart Limits Use of General Knowledge in IPR Petitions

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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

Alston & Bird

Intellectual Property Litigation Newsletter | August 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that duping the court can prove costly, excluding a witness may...more

Rothwell, Figg, Ernst & Manbeck, P.C.

July USPTO Guidance Sets Stricter Standards for Evidence in IPR Petitions

Acting Director of the USPTO, Coke Morgan Stewart, issued a memorandum last week that will change the way petitioners levy challenges to patents via inter partes review (IPR). The change will apply to any petition for IPR...more

Akin Gump Strauss Hauer & Feld LLP

Licensing Evidence of Nonobviousness Does Not Require Claim-Specific Nexus

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal...more

Akin Gump Strauss Hauer & Feld LLP

N.D. Cal. Judge Reverses Prior Order Barring Device Art “Materially Identical” to Printed Publications After Federal Circuit...

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the...more

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

What Should the USPTO Consider Changing for Implementing Post-Final Written Decision Estoppel in Ex Parte Reexamination Based on...

The estoppel provision of 35 U.S.C. § 315(e)(1) had largely prevented requesters from challenging claims of a patent via ex parte reexamination after an inter partes review (IPR) that resulted in a final written decision...more

Jones Day

Inventor Testimony of Reduction Date Leads to Denial

Jones Day on

The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more

Jones Day

Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

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Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via...more

Sunstein LLP

Collateral (Patent) Damage Undone by Federal Circuit?

Sunstein LLP on

In Kroy IP Holdings v. Groupon, The Federal Circuit issued a decision that should come as a comfort to patent owners, addressing the interplay between decisions of the Patent Trial and Appeal Board (“PTAB”) in inter partes...more

Knobbe Martens

Inaction Can Lead To Argument Forfeiture on Appeal

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ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board - A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Touches on Appellate Standing and Prior Art Determinations in the Context of Post-Grant Review Proceedings

In CQV Co. Ltd. v. Merck Patent GmbH, the Federal Circuit addressed (1) the interaction of indemnification agreements with Article III standing for appeals of post-grant review decisions of the Patent Trial and Appeal Board;...more

Jones Day

Petitioner’s Proof of Printed Publication Falls Short

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On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Jones Day

Speculative IPR Discovery Request Not in the Interest of Justice

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“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

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Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).” * The opinions expressed are those of the attorneys and do...more

Jones Day

Thickness Arguments Cross the Line for Federal Circuit

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When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

Kilpatrick on

Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more

Jones Day

“First Available” Date Alone Is Insufficient Evidence of Disclosure

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The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

Jones Day

Petitioner Mistakenly Ignores Not-So-Optional Claim Limitation

Jones Day on

The PTAB recently excluded a portion of Duration Media LLC’s (Petitioner) reply declaration for containing improper new evidence in an inter partes review petition filed against Rich Media Club LLC (Patent Owner) challenging...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

DLA Piper

USPTO Director’s Decision Highlights Consequences of Evidence Suppression

DLA Piper on

In a rare exercise of authority through a sua sponte director review, US Patent and Trademark Office (USPTO) Director Kathi Vidal affirmed the Patent Trial and Appeal Board (PTAB)’s decision to sanction patent owner Longhorn...more

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

Jones Day on

On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Permits Submission of Evidence Midstream to Bolster Public Accessibility of References Despite Objections

The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more

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