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Patent Trial and Appeal Board Patents

Alston & Bird

Patent Case Summaries | Week Ending August 29, 2025

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Global Health Solutions LLC, v. Marc Selner, No. 2023-2009 (Fed. Cir. (PTAB) Aug. 26, 2025). Opinion by Stark, joined by Stoll and Goldberg. “This case marks [the Federal Circuit’s] first review of an AIA derivation...more

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

King & Spalding

Live Long and Patent: Lessons from Captain Kirk’s Encounter with the PTAB

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In a tale that boldly goes where few celebrity inventors have gone before, William Shatner—yes, that William Shatner—alongside two co-inventors, filed a patent application for a “Smartphone Organization System and...more

WilmerHale

PTAB/USPTO Update - September 2025

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On August 28, President Trump nullified via executive order the USPTO’s December 2024 Collective Bargaining Agreement (CBA), which covers approximately 9,000 patent examiners and other professionals at the USPTO....more

Knobbe Martens

[Webinar] Dodging Denial: Winning Strategies for PTAB Petitions Post-Fintiv - September 18th, 12:00 pm - 1:00 pm PT

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Join Knobbe Martens partners Christy Lea and Ted Cannon for a strategic deep dive into the evolving PTAB landscape. With discretionary denials on the rise following the USPTO’s March 24 guidance, this session will equip...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

Fish & Richardson

Attorney-Client Privilege for Foreign Patent Agents and European Patent Attorneys

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Attorney-client privilege refers to the protection of confidential communications made for the purpose of obtaining or providing legal advice. Application of and exceptions to this privilege are fact-based determinations made...more

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

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The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...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

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

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In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Proskauer - The Patent Playbook

Crypto Unlocked: New Patent Eligibility Guidance on Blockchain Technology  

The U.S. gave crypto one of its biggest regulatory jolts in years. With the signing of the Guiding and Establishing National Innovation for U.S. Stablecoins (“GENIUS”) Act stablecoins now have a legal framework. The GENIUS...more

Loeb & Loeb LLP

White House Executive Order Disbands Patent Examiners’ Union

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On Thursday, August 28, 2025, the President of the United States issued an Executive Order which effectively disbanded the union representing patent examiners (POPA). As a justification, the Order stated patent examiners are...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

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

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Jones Day

Institution Denied Based on Parallel Proceeding and Prior Denial

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On December 6, 2024, Comcast Cable Communications, LLC (“Comcast”) filed three separate petitions for inter partes review (“IPR”) of U.S. Patent No. 9,866,438 (“the ’438 Patent”), which is assigned to Entropic Communications,...more

McDonnell Boehnen Hulbert & Berghoff LLP

DexCom, Inc. v. Stewart (Fed. Cir. 2025)

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in an inter partes review prompted by an infringement allegation in DexCom, Inc. v....more

Morgan Lewis

USPTO Memo Clarifies AI/ML Patent Eligibility Rules

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Deputy Commissioner for Patents Charles Kim issued a memorandum to three technology centers reminding examiners how subject matter eligibility should be evaluated under 35 USC § 101. These technology centers often handle...more

Goodwin

UK Court of Appeal Upholds Moderna mRNA Patent Against Pfizer/BioNTech

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On August 1, 2025, a UK Court of Appeal upheld the validity of Moderna’s European Patent No. 3,590,949 (“EP’949”) in a dispute with Pfizer and BioNTech. The decision affirmed a July 2024 UK High Court ruling finding that...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

Alston & Bird

Intellectual Property Litigation Newsletter | August 2025

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Welcome to the Intellectual Property Litigation Newsletter, our review of decisions and trends in the intellectual property arena. In this edition, we learn that duping the court can prove costly, excluding a witness may...more

Jones Day

Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

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On July 18, 2025, Scott R. Boalick, Chief Administrative Patent Judge for the Patent Trials and Appeals Board (“PTAB”), announced that, absent good cause, the PTAB will issue a Notice of Filing Date Accorded within 14 days...more

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