News & Analysis as of

Patent Trial and Appeal Board Patent Invalidity Patent Litigation

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

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

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

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

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

A&O Shearman

Federal Circuit Issues Key Ruling On Collateral Estoppel And Patent Invalidity

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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

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

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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.

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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

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

Venable LLP on

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

Baker Botts L.L.P.

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

Baker Botts L.L.P. on

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

K&L Gates LLP

USPTO Director Ends IPR Against Midas Green Technologies

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On 25 July 2025, K&L Gates secured an important win for its client, Midas Green Technologies, LLC. Acting USPTO Director Coke Morgan Stewart granted Director review and denied institution of an inter partes review (IPR)...more

Alston & Bird

Patent Case Summaries | Week Ending July 25, 2025

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IGT v. Zynga Inc., No. 2023-2262 (Fed. Cir. (PTAB) July 22, 2025). Opinion by Taranto, joined by Prost and Reyna. IGT owns a patent related to secured virtual networks in gaming environments. After the patent application was...more

Goodwin

Fresenius Files Two IPRs Against Regeneron Aflibercept Patents

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On July 14, 2025 Fresenius filed two IPR petitions challenging Regeneron’s patents related to aflibercept. Regeneron has not asserted that Fresenius infringes either of these patents in district court litigation; however,...more

Knobbe Martens

Applicant Admitted Prior Art Can (Sometimes) Show Obviousness

Knobbe Martens on

SHOCKWAVE MED., INC., V. CARDIOVASCULAR SYS., INC. - Before Lourie, Dyk, and Cunningham.  Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019-00405. In inter partes review...more

A&O Shearman

Non-Application Of Interference Estoppel By PTAB In An IPR Institution Decision Found To Be Unreviewable

A&O Shearman on

On July 22, 2025, the Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board’s (the “PTAB”) decision not to apply interference estoppel and, therefore, to institute an inter partes review...more

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

What Should the USPTO Consider Changing for Implementing Post-Final Written Decision Estoppel in Ex Parte Reexamination Based on...

The estoppel provision of 35 U.S.C. § 315(e)(1) had largely prevented requesters from challenging claims of a patent via ex parte reexamination after an inter partes review (IPR) that resulted in a final written decision...more

Jones Day

Inventor Testimony of Reduction Date Leads to Denial

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The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940 (“the ‘940 patent”). ...more

ArentFox Schiff

Overcoming the ‘Settled Expectations’ Doctrine: Guidance From Intel v. Proxense

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Last month, we provided an overview of the Patent Trial and Appeal Board’s (PTAB) application of the “settled expectations” doctrine, articulated in recent PTAB director-level decisions. Interim Director Coke Morgan Stewart...more

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