On November 17, 2025, USPTO Director John Squires issued a memorandum introducing a new procedure allowing petitioners to submit a voluntary Search Disclosure Declaration (SDD) that explains the petitioner’s search strategy...more
12/26/2025
/ Disclosure Requirements ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Examinations ,
Patent Search ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Search Terms ,
USPTO
The USPTO’s Acting Deputy Director, Coke Morgan Stewart, issued a decision on October 3, 2025, declining to exercise discretion to deny institution in Carbyne, Inc. v. Tritech Software Systems, IPR2025-00959, Paper 11 (Oct. 3...more
12/19/2025
/ Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Reissue Applications ,
Patent Trial and Appeal Board ,
Prior Art ,
Reissue Patents ,
Stays ,
USPTO
In its recent decision in RØDE Microphones, LLC et. al. vs. Zaxcom, Inc., the PTAB declined to apply collateral estoppel based on prior post-grant proceedings because the prior proceedings had applied a different standard of...more
11/20/2025
/ Claim Construction ,
Collateral Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
On October 17, 2025, the USPTO issued a notice of proposed rulemaking (“Notice”) regarding the rules of practice for inter partes review before the PTAB. The proposed rules do not apply to post grant review petitions,...more
11/18/2025
/ Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Proposed Rules ,
Rulemaking Process ,
USPTO
On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations....more
10/17/2025
/ Denial of Institution ,
Discretionary Functions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
NPRM ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Prior Art ,
Proposed Rules ,
Rulemaking Process ,
USPTO
In a Director Review, the Acting Director reversed a panel decision to discretionarily deny an IPR under § 325(d). The Acting Director held that the PTAB’s own findings in two previous IPRs sufficiently proved Examiner error...more
9/12/2025
/ Abuse of Discretion ,
Appeals ,
Fashion Industry ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Nike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand ,
Sketchers ,
Statutory Interpretation ,
USPTO
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
8/11/2025
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
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
7/28/2025
/ Evidence ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
USPTO
A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more
6/27/2025
/ Appeals ,
Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Judicial Authority ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more
5/22/2025
/ Administrative Law Judge (ALJ) ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Statutory Interpretation
In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more
5/16/2025
/ CAFC ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
5/2/2025
/ Claim Construction ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more
4/28/2025
/ Apple ,
Claim Construction ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...more
4/9/2025
/ America Invents Act ,
Claim Construction ,
Disclosure Requirements ,
Filing Deadlines ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Provisional Applications ,
Roku
Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
2/25/2025
/ Appeals ,
Enablement Inquiries ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Palo Alto Networks (PAN) filed a petition for inter partes review of Centripetal Networks’ patent—U.S. Patent No. 10,530,903—which is directed to a computing system for correlating packets in communication networks with a...more
The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General...more
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more
1/23/2025
/ Appeals ,
Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Trial Practice Guidance ,
USPTO
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more
The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology. Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024). The claimed invention related to...more
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution...more
On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed...more
Recently, the Patent Trial and Appeals Board (“PTAB”) released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). ...more