News & Analysis as of

Patent Trial and Appeal Board Patent Examinations Claim Construction

MoFo Life Sciences

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

MoFo Life Sciences on

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

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...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

Goodwin

Issue Twenty-Seven: PTAB Trial Tracker

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The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Bass, Berry & Sims PLC

USPTO Designates Three Decisions Concerning Discretion to Deny Inter Partes Review Under 35 U.S.C. § 325(d)

On March 24, the USPTO issued two precedential decisions and one informative decision that clarify the circumstances under which the PTAB will utilize its discretion to deny IPR institution under 35 U.S.C. § 325(d). This...more

Mintz - Intellectual Property Viewpoints

Ex parte WILHELM HEINE: PTAB Rejects Examiner’s Unreasonable Claim Construction

During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an...more

Jones Day

Precedential: PTAB Considers § 314(a) Factors Even When Denying Under § 325(d)

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When exercising its broad discretion on whether to institute review, the PTAB is not limited to consideration of factors associated with the type of denial it ultimately issues. In a recent decision that the PTAB designated...more

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

The Goods on IP - July 2018: Clearing up Conjunctive Claim Construction: PTAB Guidance on the Use of "At Least One Of"

The phrase “at least one of” is used in claims to indicate selection from a group of elements that follows the phrase. When used, practitioners may grapple with whether “at least one of A and B” or “at least one of A or B” is...more

Jones Day

PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

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On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...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

Jones Day

Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application

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A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or...more

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