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Discretionary Denial Requires Compelling Analysis Only After Fintiv Factors Support Denial

In Commscope Techs. LLC v. Dali Wireless, Inc. the Director of the U.S. Patent Office issued a precedential decision that discretionary denial requires the Patent Trial and Appeal Board (PTAB) to perform the compelling merits...more

Board Must Consider Separately Each Dependent Claim Incorporated Into Multiple Dependent Claim

In Nested Bean, Inc. v. Big Beings USA Pty Ltd., the director of the 'U.S. Patent and Trademark Office (Patent Office) (Director) granted review and modified the Patent Trial and Appeal Board’s (Board) final written decision...more

Patent Office Director Designates Precedential Opinion on IPR Expert Evidence/Testimony

In Xerox Corp. v. Bytemark, Inc., the Director of the U.S. Patent and Trademark Office made precedential a prior decision of the Patent Trial and Appeal Board (the Board) over when an expert declaration from an inter partes...more

Proposed Claims Allowed Despite Including Amendments Not Responsive to Unpatentability Ground

In American National Manufacturing Inc. v. Sleep Number Corporation, the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a...more

Disclaimer Not Binding in IPR Proceeding Where Made

In CUPP Computing AS v. Trend Micro Inc., the Federal Circuit held that a disclaimer made in an inter partes review (IPR) proceeding was not binding in that proceeding, i.e., the disclaimer is not binding in the proceeding in...more

Inventor’s Own Provisional Application Invalidated Invention When Priority Denied

In Konda v. Flex Logix Technologies, Inc., the Federal Circuit held that a provisional application incorporated by reference in a Patent Cooperation Treaty (PCT) application was prior art against the later filed claims of the...more

Updated Guidance on Discretionary Denial of Inter Partes Review Proceedings

The U.S. Patent and Trademark Office issued updated interim guidance on when the Patent Trial and Appeal Board (Board) may deny review of patents based on parallel litigation, which should provide clarity on when denials are...more

Inter Partes Review: Updated Guidance on Use of Applicant Admitted Prior Art

The U.S. Patent and Trademark Office issued updated guidance on acceptable uses of applicant admitted prior art (AAPA) in inter partes review (IPR) proceedings under 35 U.S.C. § 311.1 This guidance replaces the guidance...more

Inter Partes Review Estoppel Applies to All Arguments Put Forward Against Challenged Claims

In California Institute of Technology v. Broadcom Limited,1 the Federal Circuit overruled prior precedent and clarified that inter partes review (IPR) estoppel applies not just to claims and grounds asserted in the petition...more

Inter Partes Review May Not Rely Solely on Admitted Prior Art

In Qualcomm Incorporated v. Apple Inc., the Federal Circuit held that applicant admitted prior art (AAPA) may not be the basis of an invalidity ground in an inter partes review (IPR), and therefore, an IPR petition cannot...more

Supreme Court: PTAB Judges Unconstitutionally Appointed; Court Gives Director Supervisory Authority

In United States v. Arthrex, Inc., the Supreme Court held that Patent Trial and Appeal Board (PTAB) administrative patent judges (APJs) are unconstitutionally appointed. However, the Court resolved the problem by making PTAB...more

Non-Enabled Futuristic Engine Could Not Invalidate Claimed Turbine Engine

In Raytheon Technologies Corporation v. General Electric Company, the Federal Circuit held that the Patent Trial and Appeal Board (Board) incorrectly invalidated a Raytheon turbine engine patent as obvious based on a...more

Invalidity Challenges May Star Simple Words–Reading of ‘Command Function’ Doomed Obviousness Dispute

In Comcast Cable Communications, LLC v. Promptu Systems Corp., the Federal Circuit held that the plain meaning of the claim phrase “command function” was limited to functions that command an action to be taken. The meaning of...more

Final Rule to Assign Burden of Persuasion on Motions to Amend in Trial Proceedings

The U.S. Patent and Trademark Office (Patent Office) has issued final rules in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings...more

Board Designates Two Decisions ‘Precedential,’ Applying Discretion for Efficient Use of Resources

The Patent Trial and Appeal Board (Board) designated as precedential two decisions involving situations where the Board determined whether to institute review, using its discretion and based on whether review would be an...more

Board Designates Three Precedential Decisions for Instituting, Including Real Party in Interest

The U.S. Patent and Trademark Office (Patent Office) designated new Patent Trial and Appeal Board (Board) precedents protecting patent owners from multiple inter partes review (IPR) challenges. The Board decisions included...more

Supreme Court: Inter Partes Review Time Bar Held Not Appealable

In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that the Patent Trial and Appeal Board (Board) decision whether an inter partes review (IPR) petition was timely filed could not be appealed. In a...more

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