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Apple Patents United States Patent and Trademark Office

Womble Bond Dickinson

USPTO’s Rescission of its Discretionary Denial Memorandum - Much Ado About Nothing?

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In May 2020, the Patent Trial and Appeal Board (“PTAB”) panel in Apple Inc. v. Fintiv, Inc. (IPR2020-00019) denied institution of Apple’s petition in view of the advanced state of a parallel district court litigation and in...more

Holland & Knight LLP

Rescission of the Fintiv Guidance Memorandum, and What Comes Next

Holland & Knight LLP on

The U.S. Patent and Trade Office (PTO) on February 28, 2025, rescinded former PTO Director Kathi Vidal's June 21, 2022, memorandum (Memorandum) addressing discretionary denial of inter partes review (IPR) of patents that are...more

Venable LLP

USPTO Rescinds 2022 Fintiv Memorandum

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On February 28, 2025, the USPTO issued a Notice rescinding a Memorandum issued by former Director Kathy Vidal, which, since June 21, 2022, had defined USPTO guidance regarding whether to discretionarily deny a post-grant...more

Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

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On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

Knobbe Martens

The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents

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Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office. Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning expired patents because the review of such patents...more

Fenwick & West LLP

Key Federal Circuit Patent Rulings Impacting Your Business - Recent Rulings

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In Wisconsin Alumni Research Foundation v. Apple, the Federal Circuit expanded the preclusive effect of non-infringement rulings. It ruled that prior judgments of non-infringement can prevent follow-on lawsuits involving...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

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

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

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In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

WilmerHale

FRAND Quarterly: Navigating the Global SEP Landscape - January 2024

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This marks the first issue of WilmerHale’s FRAND Quarterly: Navigating the Global SEP Landscape, a bulletin that will highlight developments about the licensing, litigation, and regulation of patents that are or are claimed...more

Bradley Arant Boult Cummings LLP

The Long Con Otherwise Known as Prosecution Laches

Last week, in Personalized Media Communications, LLC v. Apple, Inc., the Federal Circuit left intact Judge Rodney Gilstrap’s ruling of unenforceability based on prosecution laches and deprived Personalized Media...more

Knobbe Martens

Judicial Review Is Available for PTO Director’s Fintiv Rulemaking Procedure

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APPLE INC. v. VIDAL - Before Lourie, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of California. Summary: Judicial review is available to determine whether the PTO...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Fish & Richardson

Director Vidal Issues Interim Guidance on Discretionary Denials under Fintiv

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Earlier today, USPTO Director Kathi Vidal issued interim guidance regarding the application of the factors the PTAB considers in determining whether to institute an AIA post-grant proceeding where there is parallel district...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Nixes Admitted Prior Art as Basis for IPR

On February 1, in Qualcomm Inc. v. Apple Inc., the Federal Circuit held that Apple could not base an inter partes review (IPR) challenge of a Qualcomm patent solely on “applicant admitted prior art” (AAPA) found in the patent...more

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

In Qualcomm v. Apple, Federal Circuit Rules Out Applicant Admitted Prior Art As the “Basis” for Inter Partes Review

On the first of February, in Qualcomm Inc. v. Apple Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded the Patent Trial and Appeal Board (“the Board”) on two inter partes review (“IPR”)...more

Kramer Levin Naftalis & Frankel LLP

Northern District of California Dismisses Challenge to PTAB’s Fintiv Factors

On Nov. 10, 2021, the Northern District of California granted the United States Patent and Trademark Office’s (USPTO) motion to dismiss a lawsuit brought by Apple and co-plaintiffs challenging the Patent Trial and Appeal...more

Kramer Levin Naftalis & Frankel LLP

United States Calls for Supreme Court to Deny Petition for Certiorari Challenging Fintiv Factors

On Oct. 28, 2021, the Solicitor General filed a brief in opposition to Apple’s petition for a writ of certiorari in Apple Inc. v. Optis Cellular Tech., LLC et al. (No. 21-118). The government argued that the Federal Circuit...more

Knobbe Martens

Federal Circuit Review - June 2021

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Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches - In Hyatt v. Hirshfeld, Appeal No. 18-2390, the Federal Circuit held that the PTO met its burden to prove prosecution laches for bulk-filed...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - July 2021

This issue of The PTAB Review begins with a brief summary of the U.S. Supreme Court’s most recent pronouncement about America Invents Act (AIA) reviews. It then provides an update on the Patent Trial and Appeal Board’s...more

Haug Partners LLP

Apple Inc. v. Voip-Pal.com, Inc., No. 18-1456, 2020 U.S. App. LEXIS 30820 (Fed. Cir. Sept. 25, 2020)

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In a consolidated appeal from the USPTO’s Patent Trial and Appeal Board, Apple, Inc. challenged the Patent Trial and Appeal Board’s (“Board”) determination that Voip-Pal.com, Inc.’s patents were not obvious over the prior...more

McDermott Will & Emery

A Decision on Appeal Is Final . . . Mostly

McDermott Will & Emery on

In the latest round of the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit held to its precedents in determining when 35 USC § 317(b) estoppel is triggered against inter partes re-examinations. VirnetX...more

McDonnell Boehnen Hulbert & Berghoff LLP

DSS Technology Management, Inc. v. Apple Inc. (Fed. Cir. 2018)

Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written...more

Mintz - Intellectual Property Viewpoints

Have you ever used a one-click ordering process online? Then you indirectly paid Amazon.

If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result,...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Invalidation of Patents Following Jury Verdict of Infringement Does Not Necessarily Impact Willfulness Finding

In a recent decision, Judge Schroeder of the Eastern District of Texas rejected the argument that decisions of the United State Patent and Trade Office (USPTO) invalidating patents held infringed by a jury means that a...more

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