News & Analysis as of

Patent Trial and Appeal Board Intellectual Property Protection Appeals

Knobbe Martens

Federal Circuit Review | June 2025

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In Dolby Laboratories Licensing Corporation V. Unified Patents, LLC, Appeal No. 23-2110, the Federal Circuit held that a patent owner lacks Article III standing to appeal an inter partes review decision on patentability when...more

Morgan Lewis

‘Settled Expectations,’ PTAB’s New Discretionary Denial Factor, Gains Additional Footing in Dabico

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Acting Director of the USPTO Coke Morgan Stewart recently discretionarily denied institution of an inter partes review (IPR) based on a new consideration, “settled expectations,” that is, the length of time that the...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

Federal Circuit: RPI Arguments Must First Be Raised at the PTAB

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Apple Inc., et. al v. Gesture Technology Partners, LLC (March 4, 2025) (Moore (Chief Judge), Prost and Stoll) (on appeal from the Patent Trial and Appeal Board) [WAIVER; OBVIOUSNESS] ....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

A&O Shearman

Court Of Appeals For The Federal Circuit Holds That Conception Does Not Require Certainty of Success

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On May 12, 2025, the Court of Appeals for the Federal Circuit vacated-in-part and remanded a Patent Trial and Appeal Board (“PTAB”) decision in an interference proceeding concluding that the Broad Institute, Inc. (“Broad...more

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

Morrison & Foerster LLP

Federal Circuit Vacates and Remands in Long-Pending Dispute over CRISPR IP

Those hoping the Court of Appeals for the Federal Circuit would finally resolve priority in the long-pending dispute between the University of California and the Broad Institute will have to wait a little longer. Oral...more

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

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Recentive Analytics, Inc. v. Fox Corp., et al., No. 2023-2437 (Fed. Cir. (D. Del.) Apr. 18, 2025). Opinion by Dyk, joined by Prost and Goldberg (sitting by designation). Recentive sued Fox for infringing four patents that...more

Sheppard Mullin Richter & Hampton LLP

You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review

AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor...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

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

Jones Day

Federal Circuit Affirms Despite Claim Construction Error

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The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more

Goodwin

The Court of Appeals for the Federal Circuit’s In Re Xencor Decision: Jepson Claims Require Written Description for Their...

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On March 13, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Xencor, Inc. (the Xencor decision). The Xencor decision affirms the decision of the Appeals Review Panel...more

McDermott Will & Emery

Palette of Evidence: PTAB Must Consider Entire Record to Determine Prior Art Status

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The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board patentability determination, finding that the Board failed to consider the entire record regarding the prior art status of a...more

Knobbe Martens

Limits of Inherent Anticipation in Product-By-Process Claims

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RESTEM, LLC v. JADI CELL, LLC - Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. Inherency in product-by-process claims requires the prior art process to inevitably produce the claimed...more

Knobbe Martens

The Board Must Provide Reasoned Explanation When Discarding Material, Unrebutted Evidence

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CQV CO., LTD. v. MERCK PATENT GMBH - Before Cunningham, Chen, and Mayer. Appeal from the Patent Trial and Appeal Board. The Board erred by failing to explain why it discarded material and unrebutted evidence that a reference...more

Knobbe Martens

Where Method Claim Steps Are Connected by “And,” a Covered Method Must Perform Each Step

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SIERRA WIRELESS, ULC V. SISVEL S.P.A. Before Moore, Schall, and Taranto. Appeal from the Patent Trial and Appeal Board. The Board erred by finding method-claim steps connected by “and” to be conditional and by never...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

Alston & Bird

Patent Case Summaries | Week Ending March 14, 2025

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CQV Co., Ltd. v. Merck Patent GmbH, No. 2023-1027 (Fed. Cir. (PTAB) Mar. 10, 2025). Opinion by Cunningham, joined by Chen and Mayer. CQV petitioned the Patent Trial and Appeal Board for post-grant review of a Merck patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: In re: Xencor, Inc.

In re: Xencor, Inc., Appeal No. 2024-1870 (Fed. Cir. Mar. 13, 2025) Our case of the week is an appeal from a decision of the Appeals Review Panel of the Patent Trial and Appeal Board, concerning Xencor’s patent application...more

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

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On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Anticipation Analysis for Product-By-Process Claims

In Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. Mar. 13, 2025), the Federal Circuit upheld the Patent Trial and Appeal Board’s decision holding that U.S. Patent No. 9,803,176 (“the ’176 patent”) was not inherently...more

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