News & Analysis as of

Patent Trial and Appeal Board Jurisdiction Appeals

McDermott Will & Emery

A Patent Without a Pulse: Provisional Rights Don’t Outlive the Patent

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the...more

Jones Day

PTAB Retains Jurisdiction Of Expired Patents

Jones Day on

The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more

Farella Braun + Martel LLP

EDTX's Resurgence as the Top Patent Hot Spot

Judge Mazzant’s case assignment order on March 3, 2025, brought the topic of the Eastern District of Texas (“EDTX”) being the busiest forum for patent cases back into the spotlight...more

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

PTAB’s Jurisdiction Over Expired Patents Confirmed by Federal Circuit

On January 27, 2025, the Federal Circuit held that the Patent Trial and Appeal Board (“PTAB”) “has jurisdiction over IPRs concerning expired patents.” See Apple Inc. v. Gesture Tech. Partners, LLC, 2025 WL 299939, *2 (Fed....more

Knobbe Martens

The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents

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Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office. Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning expired patents because the review of such patents...more

A&O Shearman

Federal Circuit Holds That PTAB Has Jurisdiction To Review Expired Patents

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On, January 27, 2025, the United States Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a decision from the Patent Trial and Appeal Board (“PTAB”) on certain claims of Gesture Technology...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc.

Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., Appeal Nos. 2024-1965, -1966, -2082, -2083 (Fed. Cir. Jan. 29, 2025) Our Case of the Week is a 31-page decision that touches on a variety of issues, including...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms PTAB Jurisdiction Over Expired Patents in IPRs

On January 27, in Apple Inc. v. Gesture Technology Partners, LLC, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) has jurisdiction to conduct inter partes reviews (IPRs) over patents that have expired....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2023 #2

Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC, Appeal No. 2021-2370 (Fed. Cir. Jan. 12, 2023) - In an appeal from the U.S. District Court for the Southern District of Texas, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #5

Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more

Knobbe Martens

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

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MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

Knobbe Martens

Federal Circuit Remands CBM Appeals Under Arthrex, Leaves Forum Selection Dispute for Another Day

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NEW VISION GAMING & DEVELOPMENT, INC. V. SG GAMING, INC. Before Newman, Moore, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit vacated and remanded two CBM decisions under...more

McDermott Will & Emery

The Road Less Traveled: IPR Denial Decisions Appealable via Mandamus

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The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under...more

McDermott Will & Emery

Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals

Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the...more

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

PTAB Strategies and Insights - March 2020: 315(b) Jurisdictional Issues Can Still Be Waived if not Raised at the Board

In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more

Knobbe Martens

Federal Circuit Review - September 2019

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State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

McDermott Will & Emery

No Concrete Controversy if There Are No Claims

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In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Knobbe Martens

Federal Circuit Review - May 2018

Knobbe Martens on

Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more

Knobbe Martens

PGS Geophysical AS v. Iancu

Knobbe Martens on

Federal Circuit Summaries - Before Wallach, Taranto, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2016-2099, -2100, -2101, -2332, -2333, -2334 (Fed. Cir. May 7, 2018) - In an appeal from an inter partes review, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Knowles Electronics LLC v. Iancu, Appeal No. 2016-1954 (Fed. Cir. 2018) - In an appeal from an inter partes reexamination, the Federal Circuit affirmed a decision by the PTAB invalidating a...more

Knobbe Martens

The Federal Circuit Stays IPR Pending Review of the PTAB’s Denial of St. Regis Mohawk Tribe’s Sovereign Immunity

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The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®. See The Saint Regis Mohawk Tribe is not entitled to...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

McDermott Will & Emery

Notice of Appeal Divests PTAB of Jurisdiction

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Addressing for the first time the question of whether the Patent Trial and Appeal Board (PTAB or Board) retains jurisdiction over an inter partes review (IPR) during the 63 days after a Final Written Decision, the PTAB held...more

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