News & Analysis as of

Patents Patent Trial and Appeal Board Patent Litigation

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

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

McDermott Will & Emery

Game over: Prior interference doesn’t preclude IPR proceeding

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination during an inter partes review (IPR) proceeding, concluding that the Board’s decision to not apply...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

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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

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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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: IGT v. Zynga Inc.

IGT v. Zynga Inc., Appeal No. 2023-2262 (Fed. Cir. July 22, 2025) In this week’s Case of the Week, the Federal Circuit examined the reviewability and merits of the Patent Trial Appeal Board’s decision to institute inter...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

USPTO Ends Remote PTAB Hearings Effective September 1

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The US Patent and Trademark Office (USPTO) has announced that, effective September 1, all PTAB hearings will be conducted in person at USPTO offices, marking a departure from the virtual and hybrid formats adopted in recent...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

Alston & Bird

Patent Case Summaries | Week Ending July 18, 2025

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Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., et al., Nos. 2023-1864, -1940 (Fed. Cir. (PTAB) July 14, 2025). Opinion by Dyk, joined by Lourie and Cunningham....more

Proskauer - The Patent Playbook

PTO Defends its Recent Policy Changes Regarding Discretionary Denials

In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes...more

McDermott Will & Emery

Applicant-admitted prior art may inform but can’t be basis for IPR challenges

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The US Court of Appeals for the Federal Circuit clarified that while applicant-admitted prior art (AAPA) may be cited as evidence of general background knowledge in inter partes review (IPR) proceedings, it cannot serve as...more

Jones Day

“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

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As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the...more

A&O Shearman

UPC Court of Appeal clarifies approach to claim construction

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Insulet v EOFlow UPC_CoA_768/2024 (Ord_69078/2024) The Unified Patent Court (UPC) Court of Appeal has issued a significant decision that provides important guidance on the interpretation of patent claims in UPC...more

A&O Shearman

Federal Circuit Invalidates Patent For Angioplasty Catheter Based On Applicant Admitted Prior Art

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The Federal Circuit recently issued a precedential decision in Shockwave Med., Inc. v. Cardiovascular Sys., Inc. (CSI), affirming-in-part and reversing-in-part the Patent Trial and Appeal Board’s (PTAB) decision, and...more

Jones Day

Discretionary Denial Where Inventors Petitioned for Unpatentability

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Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...more

Womble Bond Dickinson

Design Patent Obviousness: One Year Later

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One year has passed since the Court of Appeals for the Federal Circuit made its landmark decision in LKQ Corp. v. GM Global Tech. Operations LLC, which overruled the longstanding Rosen-Durling test for determining design...more

McDermott Will & Emery

Appeal is too late to raise percolating claim construction dispute

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The US Court of Appeals for the Federal Circuit affirmed a district court’s finding of noninfringement, concluding that the patent owner had improperly raised a claim construction issue for the first time on appeal – an...more

Jones Day

Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation

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In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors, despite Petitioner’s...more

DLA Piper

The Battle for CRISPR: Federal Circuit Draws a Crisp Line Between Conception and Reduction to Practice

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The dispute over who invented CRISPR-Cas9 (CRISPR), a gene-editing technology awarded the 2020 Nobel Prize in Chemistry, has been one of the most closely watched legal battles in the world of biotechnology. For more than a...more

Venable LLP

Spotlight On: Enbrel® (etanercept) / Erelzi® (etanercept-szzs) / Eticovo® (etanercept-ykro) - July 2025

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Etanercept Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

Venable LLP

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

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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

The Federal Circuit Rejects PTAB’s Use Of Traditional Construction Of “Consisting Essentially Of”

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On June 30, 2025, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the U.S. Patent Trial and Appeal Board (the “Board”) and remanded the case for further proceedings using a narrower construction of the...more

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