News & Analysis as of

Patent Trial and Appeal Board Patent Examinations Appeals

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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: In re Google Tech. Holdings LLC, 980 F.3d 858...

Google applied for a patent on video-on-demand systems. The Patent Trial and Appeal Board affirmed the examiner’s rejection of the claims as obvious, stating that Google’s responses to the examiner’s rejections were...more

Mintz - Intellectual Property Viewpoints

Expediting Patent Prosecution After An Advisory Action

It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO)...more

McDonnell Boehnen Hulbert & Berghoff LLP

Idorsia Pharmaceuticals, Ltd. v. Iancu (Fed. Cir. 2020)

This week, in Idorsia Pharmaceuticals, Ltd. v. Iancu, the Federal Circuit affirmed a decision by the U.S. District Court for the Eastern District of Virginia granting summary judgment in favor of the U.S. Patent and Trademark...more

Morgan Lewis

Recent Federal Circuit Decision Suggests Patent Challengers Cannot Invoke Arthrex

Morgan Lewis on

A recent decision by the US Court of Appeals for the Federal Circuit suggests that petitioners who unsuccessfully challenge patents in an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) cannot rely on...more

Knobbe Martens

Federal Circuit Review - November 2019

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The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

Knobbe Martens

PTAB Must Consider Evidence Showing Prior Art Is Analogous to Invention

Knobbe Martens on

AIRBUS S.A.S. v. FIREPASS CORPORATION Before Lourie, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Whether an asserted prior art reference is reasonably pertinent to the particular problem...more

Knobbe Martens

In Re: Marco Guldenaar Holdings B.V.

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Federal Circuit Summaries - Before Chen, Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent...more

Knobbe Martens

Nantkwest v. Iancu

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Federal Circuit Summary - En Banc (excl. Chen), Opinion for the court filed by Stoll, joined by Newman, Lourie, Moore, O’Malley, Wallach, and Taranto. Appeal from the United States District Court for the Eastern District...more

Skadden, Arps, Slate, Meagher & Flom LLP

Federal Circuit Denies PTO Attorneys’ Fees

On July 27, 2018, the Federal Circuit ruled that a patent applicant’s obligation to pay the U.S. Patent and Trademark Office’s (PTO) “expenses” for district court proceedings to review patent application rejections does not...more

Foley & Lardner LLP

Federal Circuit Chastises PTAB Over Moving Target On Ex Parte Appeal

Foley & Lardner LLP on

The Federal Circuit decision in In re Durance is a rare precedential decision in an ex parte appeal from a Patent Trial and Appeal Board (PTAB) decision rejecting a pending patent application. The Court took the USPTO to task...more

Knobbe Martens

In Re: Durance

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Federal Circuit Summaries - Before Lourie, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board (“PTAB”). Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the...more

Knobbe Martens

In re VerHoef

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Federal Circuit Summaries - Before Newman, Mayer, and Lourie. Appeal from the Patent Trial and Appeal Board. Summary: An application is unpatentable under pre-AIA 35 U.S.C. § 102(f) when the application does not name...more

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

Nordt: Structural Limitations Masquerading As Process Limitations

In many instances, using a particular process results in an innovative consumer product. It only makes sense that patent claims covering these innovative products may use terms or phrases related to the process (e.g.,...more

Knobbe Martens

In Re: Gregory A. Brandt, John B. Letts, Firestone Building Products Company, LLC

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Federal Circuit Summaries - Before Lourie, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - Ottah v. Fiat Chrysler, Appeal No. 2017-1842 (March 7, 2018) - In Ottah v. Fiat Chrysler, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement as to...more

Knobbe Martens

Arendi S.A.R.L. v. Google LLC

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Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...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

Foley & Lardner LLP

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

Foley & Lardner LLP on

In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

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