News & Analysis as of

Patent Trial and Appeal Board Obviousness Appeals

A&O Shearman

Federal Circuit Invalidates Patent For Angioplasty Catheter Based On Applicant Admitted Prior Art

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The Federal Circuit recently issued a precedential decision in Shockwave Med., Inc. v. Cardiovascular Sys., Inc. (CSI), affirming-in-part and reversing-in-part the Patent Trial and Appeal Board’s (PTAB) decision, and...more

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

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

The Evolution of “New” in the “Substantial New Question” Standard in Patent Reexamination

As the Patent Trial and Appeal Board and the Acting USPTO Director refocus challengers, and with them Patent Owners, towards reexamination from inter partes review proceedings, the need to understand the nuance of “new” in...more

MoFo Life Sciences

Is Your Claim Open or Closed? Claim Construction Takes on a New Meaning in Eye Therapies, LLC v. Slayback Pharma, LLC

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On June 30, 2025, the Federal Circuit issued a precedential decision in Eye Therapies, LLC v. Slayback Pharma, LLC, reversing the Patent Trial and Appeal Board’s (PTAB’s) claim construction of the phrase “consisting...more

McDermott Will & Emery

Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

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In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase...more

Knobbe Martens

An Eye Toward Prosecution History

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EYE THERAPIES, LLC v. SLAYBACK PHARMA LLC - Before Taranto, Stoll and Scarsi (sitting by designation). The patent’s prosecution history required a restrictive interpretation of the term “consisting essentially of.”...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Eye Therapies, LLC v. Slayback Pharma, LLC

Eye Therapies, LLC v. Slayback Pharma, LLC, Appeal No. 2023-2173 (Fed. Cir. June 30, 2025) In its only precedential patent opinion last week, the Federal Circuit reviewed construction of the transitional claim phrase...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies that Enablement of Prior Art is a Separate (and Distinct) Inquiry from Enablement of Claims in a Patent

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry...more

Alston & Bird

Patent Case Summaries | Week Ending June 27, 2025

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CrowdStrike, Inc. v. GoSecure, Inc., Nos. IPR2025-00068, -00070 (June 25, 2025) (designated informative on June 26, 2025). Order by Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of...more

Troutman Pepper Locke

Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast

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In this episode of the Post-Grant Podcast, Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and...more

Knobbe Martens

Keeping PACE With CRISPR

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AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. - Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Obviousness does not require all claimed limitations to be expressly disclosed in a primary prior...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

McDermott Will & Emery

When it comes to objective criteria of nonobviousness, nexus is looser for license evidence

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The US Court of Appeals for the Federal Circuit partially reversed a decision by the Patent Trial & Appeal Board, effectively relaxing the nexus requirements for patent licenses pertaining to their usage as objective indicia...more

McDonnell Boehnen Hulbert & Berghoff LLP

MSN Laboratories Private Ltd. v. Bausch Health Ireland Ltd. (Fed. Cir. 2025)

As has been noted recently (Agilent Technologies, Inc. v. Synthego Corp.), fact-based decisions from the U.S. Patent and Trademark Office (typically from the Patent Trial and Appeal Board) are reviewed under the substantial...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

Alston & Bird

Patent Case Summaries | Week Ending June 20, 2025

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Ancora Technologies, Inc. v. Roku, Inc., et al., Nos. 2023-1674, -1701 (Fed. Cir. (PTAB) June 16, 2025). Per curiam opinion, before Louri, Reyna, and Hughes. Ancora owns a patent directed to restricting unauthorized use of...more

A&O Shearman

Federal Circuit Clarifies Nexus Standard For Secondary Consideration Licensing Evidence

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On June 16, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded two final written decisions by the Patent Trial and Appeal Board (“PTAB”) that found several claims of Ancora Technologies,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Edwards Lifesciences Corp. v. Cardiovalve Ltd. (Fed. Cir. 2025)

One of the assumptions, or promises, or hopes, attendant on the inauguration of post-grant review proceedings (particularly inter partes reviews) under the Leahy-Smith America Invents Act was that, as in European Opposition...more

A&O Shearman

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

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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

Irwin IP LLP

Seeing Double?  Similar Claim Terms Could Be Trouble  

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When prosecuting a patent with similar language across various claims make sure your claim terms have different meanings, otherwise, during litigation you may lose the strategic opportunity to keep some claims valid if others...more

ArentFox Schiff

Designers Beware: Prior Utility Patent Lacking Written Support Can Anticipate Later-Filed Design Patents

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In its recent In re Floyd opinion, the US Court of Appeals for the Federal Circuit upheld a decision by Patent Trial and Appeal Board (PTAB) to reject a design applicant’s priority claim to an earlier utility filing for...more

Venable LLP

Federal Circuit Affirms PTAB’s Unpatentability Findings in Gene Therapy Hemgenix® IPRs

Venable LLP on

On May 22, 2025, the CAFC affirmed the PTAB’s (Board) Final Written Decisions in Pfizer’s IPR2021-00925 and IPR2021-00926 finding all challenged claims of uniQure’s U.S. Patent No. 9,982,248 (“the ’248 patent”) unpatentable...more

McDermott Will & Emery

X-Ray Vision: Court Sees Through Implicit Claim Construction

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous...more

A&O Shearman

Federal Circuit Rejects PTAB’s Implicit And Incorrect Claim Construction Of “Between 1 And 10”

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On May 23, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged...more

Alston & Bird

Patent Case Summaries | Week Ending May 23, 2025

Alston & Bird on

EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. (W.D. Tex.) May 23, 2025). En banc opinion by Moore, joined by Lourie, Dyk, Prost, Taranto, Chen, Hughes, and Stoll. Opinion concurring in part and dissenting in part by...more

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