News & Analysis as of

Patent Trial and Appeal Board Patent Prosecution History Claim Construction

DLA Piper

What is a “Clear and Unmistakable” Prosecution History Disclaimer?

DLA Piper on

The Federal Circuit’s March 21, 2025 decision in Maquet Cardiovascular LLC v. Abiomed Inc. et al. (No. 2023-2045) and the recent Patent Trial and Appeal Board (PTAB) Delegated Rehearing Panel decision in SynAffix B.V. v....more

Fish & Richardson

What’s New in Director Review? Lessons From the Delegated Rehearing Panel’s First Decisions

Fish & Richardson on

The Director of the United States Patent and Trademark Office (USPTO) established the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions in the wake of the Supreme Court’s 2021 decision in...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

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

PTAB Strategies and Insights - August 2021: Federal Circuit Remands for Board's Improper Use of Extrinsic Evidence During Claim...

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, the Federal Circuit vacated and remanded an inter partes review decision for the Patent Owner. The Court held that the Patent Trial and Review Board failed to perform the...more

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

PTAB Strategies and Insights - August 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

PTAB Adopts Nautilus Indefiniteness Standard

Jones Day on

In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Does the Term “Human Antibody” Include Humanized Antibodies?

In the context of Immunex’s patent on IL-4 antibodies, the Federal Circuit says yes. On October 13, 2020, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) final written decision in...more

Knobbe Martens

Federal Circuit Review - July 2020

Knobbe Martens on

Unconstitutionally Appointed Judges Cannot Decide Ex Parte Appeals - In In Re Boloro Global Limited, Appeal No. 19-2349, When administrative patent judges are unconstitutionally appointed, their decisions in ex...more

Knobbe Martens

Disclaimer Not Required for Prosecution History to Limit Claim Scope

Knobbe Martens on

PERSONALIZED MEDIA COMMUNICATION, LLC v. APPLE INC - Before Reyna, Taranto and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution history evidence need not rise to the level of disclaimer to...more

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

PTAB Strategies and Insights - September 2019: Words Matter in a Design Patent

It is important for petitioners and patent owners alike to understand the implications of Curver Luxembourg v. Home Expressions, which relied on prosecution history and the title to limit design patent claim scope....more

McDermott Will & Emery

Sharp Turnaround on Applicability of § 112, ¶6 Analysis

McDermott Will & Emery on

Addressing the applicability of 35 USC § 112, ¶6 to the term “mechanical control assembly,” the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) gave undue weight to the patent’s...more

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