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Patent Trial and Appeal Board Patent Invalidity

Morgan Lewis

USPTO Tightens Limits on AAPA Use in IPRs Following Qualcomm Precedent

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A recent memo from the acting director of the US Patent and Trademark Office directs the Patent Trial and Appeal Board (PTAB) to reject inter partes review (IPR) petitions that use “applicant admitted prior art (AAPA), expert...more

Irwin IP LLP

2025 Mid-Year Report - Top Ten Intellectual Property Cases Of 2025 (So Far)

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We have passed the midpoint of 2025, and the landscape of intellectual property law continues to evolve at a rapid pace, shaped by emerging technologies, and shifting judicial interpretations. From pivotal Supreme Court...more

Jones Day

Acting Director Reverses Previous Discretionary Denial

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For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more

Mintz - Intellectual Property Viewpoints

The PTAB Pendulum Swings: How IPR Denials are Reshaping Patent Owner and Challenger Strategies

Post-grant proceedings at the Patent Trial and Appeal Board (PTAB) are undergoing sweeping transformation. Over the past year, as other federal agencies have grown cautious to avoid further budget constraints and downsizing,...more

McCarter & English, LLP

Navigating the Landscape of Patent Challenges at the USPTO

Challengers striving to beat higher-ranked opponents at the US Open tennis tournament happening now in New York are not the only challengers facing tricky new situations. Parties wishing to challenge the validity of US...more

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

U.S. IP Update – August 2025

Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more

King & Spalding

USPTO Acting Director Stewart Limits Use of General Knowledge in IPR Petitions

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On July 31, 2025, Acting USPTO Director Coke Morgan Stewart released a memo instructing the agency “that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art...more

Knobbe Martens

No Shenanigans: IPRs and Interference Estoppel

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IGT v. ZYNGA INC. - Before Prost, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board (PTAB). Interference estoppel does not apply when the interference was terminated due to a threshold issue....more

Fenwick & West LLP

Navigating the PTAB’s New Discretionary Denial Landscape: Strategic Shifts for Patent Challenges

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The Patent Trial and Appeal Board (PTAB) has undergone significant changes in how it evaluates patent challenges, creating both opportunities and obstacles for technology and life sciences companies....more

McDermott Will & Schulte

Collateral estoppel remains inapplicable to unchallenged IPR claims

Returning to its decision in Kroy IP, the US Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc, leaving undisturbed its prior opinion that collateral estoppel does not apply...more

McDermott Will & Schulte

Use of general knowledge in IPR petitions will no longer work

On July 31, 2025, the US Patent & Trademark Office (PTO) issued a memo clarifying the requirements under 37 C.F.R. § 42.104(b)(4) for inter partes review (IPR) petitions. The memo emphasizes that petitioners must clearly...more

McCarter & English, LLP

New Patent Office Guidance Raises Bar for IPR Petitioners

The Patent Office recently announced that it will begin enforcing a rule that requires that inter partes review (IPR) petitions “specify where each element of the claim is found in the prior art patents or printed...more

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

Venable LLP on

Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re BAC IP B.V. (Fed. Cir. 2025)

A patent applicant dissatisfied by an patent examiner's rejection of that applicant's claims in ex parte prosecution has recourse by appeal to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. § 134, and to the Federal...more

A&O Shearman

Federal Circuit Issues Key Ruling On Collateral Estoppel And Patent Invalidity

A&O Shearman on

The Federal Circuit recently issued a decision in the ongoing dispute in Kroy IP Holdings, LLC v. Groupon, Inc., addressing the collateral estoppel effect of Patent Trial and Appeal Board (PTAB) decisions on subsequent...more

ArentFox Schiff

USPTO Restricts Use of AAPA and Other General Knowledge Evidence in IPR Proceedings

ArentFox Schiff on

On July 31, the US Patent and Trademark Office (USPTO) issued a new memorandum announcing that it will begin enforcing 37 C.F.R. § 42.104(b)(4) that requires petitioners in inter partes review (IPR) proceeding to “specify...more

Jones Day

Subsequent Challenge Does Not Justify Discretionary Denial

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In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more

Jones Day

Acting Director Clarifies Multi-Petition Policy for Competing Constructions

Jones Day on

On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....more

Akin Gump Strauss Hauer & Feld LLP

N.D. Cal. Judge Reverses Prior Order Barring Device Art “Materially Identical” to Printed Publications After Federal Circuit...

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the...more

Robins Kaplan LLP

United Therapeutics Corp. v. Liquidia Techs., Inc.

Robins Kaplan LLP on

Nature of the Case and Issue(s) Presented: UTC’s ’782 patent claims a method for treating pulmonary hypertension (“PH”). PH manifests in different varieties, including pulmonary arterial hypertension (“PAH”) and pulmonary...more

Fish & Richardson

USPTO Limits Use of General Knowledge in IPR Proceedings

Fish & Richardson on

On July 31, the United States Patent and Trademark Office issued a memorandum (“Memo”) announcing that the Office will renew enforcement of 37 C.F.R. § 42.104(b)(4) (“Rule 104(b)(4)”) in inter partes review (IPR) proceedings....more

Mayer Brown

Reinvigorated Enforcement of Evidentiary Rules and the Permissible Uses of General Knowledge in Inter Partes Review

Mayer Brown on

On July 31, 2025, the Acting Director of the US Patent and Trademark Office (USPTO) issued a significant memorandum that alters the evidentiary landscape for inter partes review (IPR) proceedings before the Patent Trial and...more

Venable LLP

Fresenius Kabi Files Two EYLEA® IPRs Prior to aBLA Filing Announcement

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On July 14, 2025, Fresenius Kabi filed IPR2025-01268 against Regeneron’s U.S. Patent No. 11,084,865 (“the ’865 patent”) and IPR2025-01269 against U.S. Patent No. 10,828,345 (“the ’345 patent”), both relating to EYLEA®...more

Womble Bond Dickinson

USPTO Removes Reliance on Applicant Admitted Prior Art in IPR Proceedings

Womble Bond Dickinson on

On July 31, 2025, the acting Director of the United States Patent and Trademark Office (USPTO) published a memorandum making a significant change in Patent Trial and Appeal Board (PTAB) inter partes review (IPR) practice and...more

Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

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Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

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