News & Analysis as of

Patent Trial and Appeal Board Obviousness Corporate Counsel

A&O Shearman

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

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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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Holds Applicant Admitted Prior Art Cannot Form “Part of the Basis” of an IPR Ground, Reversing a PTAB Win for...

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...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

Volpe Koenig

When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn

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Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

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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

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

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

2024 Design Patents Year in Review: Analysis & Trends

As we predicted in our 2023 report, 2024 was a banner year for design rights in the U.S. and elsewhere. In last year’s report, we noted that the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed to consider en banc...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

Morgan Lewis

Federal Circuit Clarifies Scope and Timing of Collateral Estoppel for Claims Under IPR

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In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more

Jones Day

En Banc Federal Circuit Questions Standard for Design Patent Obviousness

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Changes to design patent validity law may be coming thanks to LKQ v. GM, a case that we’ve been tracking since April 2021. On February 5, 2024, in a rare en banc hearing, the Court of Appeals for the Federal Circuit asked...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

Haug Partners LLP

Failure to Show a Reasonable Expectation of Success Dooms Obviousness Allegations

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In Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc.,1 the Federal Circuit affirmed the obviousness analysis performed by the Patent Trial and Appeal Board (“PTAB”), which found that Corcept’s patent for methods of...more

McDermott Will & Emery

Even Judges Have a Boss: PTAB Must Sufficiently Articulate its Obviousness Reasoning

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Addressing the sufficiency of the Patent Trial & Appeal Board’s (PTAB) justification of its inter partes review (IPR) determination, the US Court of Appeals for the Federal Circuit reversed the PTAB’s obviousness...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

Akin Gump Strauss Hauer & Feld LLP

PTAB Ruling Highlights a Petitioner’s Burden for Qualifying an Internet Screenshot as a “Printed Publication”

In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted...more

BakerHostetler

How Administrative Law Became the Hottest Topic in Patent Disputes at the Federal Circuit

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What comes to mind when you think of “hot topics” in patent law? Subject matter eligibility? Obviousness? Damages? Quietly, administrative law has moved to the top of the list of issues that consume the attention of the Court...more

BakerHostetler

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed...

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In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC)...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

Weintraub Tobin

The Supreme Court: Cases To Watch And Missed Opportunities

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In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved. Therefore, it is important to look both at the cases currently before the U.S....more

Jones Day

Expanded PTO Panels and Improper Joinder: The Federal Circuit Fires a Warning Shot

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The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels....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

BakerHostetler

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

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Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more

Foley & Lardner LLP

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

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On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

Mintz - Intellectual Property Viewpoints

Between a Rock and a Hard Place: Federal Circuit Says It's Required to Accord the PTAB Deference Until Instructed Otherwise by...

On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board...more

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