Understanding the Impact of IPR Estoppel and PTAB Discretionary Denials — Patents: Post-Grant Podcast
Podcast: IP(DC): Inside Patent Reform Efforts, Anticipated Federal Circuit Appeals, and Patent Cases of the Upcoming Supreme Court Term
Is the Patent Litigation Boom Coming to an End?
Eye Therapies, LLC v. Slayback Pharma, LLC, No. 2023-2173 (Fed. Cir. (PTAB) June 30, 2025). Opinion by Scarsi, joined by Taranto and Stoll. Eye Therapies owns a patent that claims a method for reducing eye redness...more
On June 30, 2025, the Federal Circuit issued a precedential decision in Eye Therapies, LLC v. Slayback Pharma, LLC, reversing the Patent Trial and Appeal Board’s (PTAB’s) claim construction of the phrase “consisting...more
EYE THERAPIES, LLC v. SLAYBACK PHARMA LLC - Before Taranto, Stoll and Scarsi (sitting by designation). The patent’s prosecution history required a restrictive interpretation of the term “consisting essentially of.”...more
Patent law in many respects has its own language and idiosyncratic expressions, and one such respect involves so-called "transitional" words or phrases (discussed in greater depth in the Manual of Patent Examination Procedure...more
The Federal Circuit issued a precedential opinion in In re: Xencor, Inc.concerning written support for Jepson claims. The decision affirms the decision of the Appeals Review Panel (ARP) of the USPTO, which held that the...more
The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s...more
INGENICO INC. v. IOENGINE, LLC Before Dyk, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware. IPR estoppel does not preclude reliance on public-use evidence that is substantively...more
In this episode of the Post-Grant Podcast, Andy Zappia, Nick Gallo, and Bryan Smith explore the evolving landscape of estoppel in inter partes review (IPR) and post-grant review (PGR) proceedings at the Patent Trial and...more
AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. - Before Prost, Linn, and Reyna. Appeal from the Patent Trial and Appeal Board. Obviousness does not require all claimed limitations to be expressly disclosed in a primary prior...more
Ancora Technologies, Inc. v. Roku, Inc., et al., Nos. 2023-1674, -1701 (Fed. Cir. (PTAB) June 16, 2025). Per curiam opinion, before Louri, Reyna, and Hughes. Ancora owns a patent directed to restricting unauthorized use of...more
Optis Cellular Technology, LLC v. Apple Inc., Appeal Nos. 2022-1904, -1925 (Fed. Cir. June 16, 2025) In this week’s Case of the Week, the Court of Appeals for the Federal Circuit vacated a jury decision awarding...more
On June 16, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded two final written decisions by the Patent Trial and Appeal Board (“PTAB”) that found several claims of Ancora Technologies,...more
On June 11, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision invalidating two patents owned by Agilent Technologies. The patents at issue, U.S. Patent...more
Precedential and Key Federal Circuit Opinions - ALNYLAM PHARMACEUTICALS, INC. v. MODERNA, INC. [OPINION] (2023-2357, 06/04/2025) (Taranto, Chen, Hughes) - Taranto, J. The Court affirmed the district court’s claim...more
An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko. In that case the Court held that the Federal Circuit was bound by the...more
When prosecuting a patent with similar language across various claims make sure your claim terms have different meanings, otherwise, during litigation you may lose the strategic opportunity to keep some claims valid if others...more
Restem filed a petition for inter partes review of U.S. Patent No. 9,803,176, directed to stem cells obtained from umbilical cord tissue and isolated through a two-step process to create a specific cell marker expression...more
The evolution of subject matter eligibility after the Supreme Court's decisions in Prometheus v. Mayo, Alice v. CLS Bank, and Association for Molecular Pathology v. Myriad Genetics has resulted in a regime of predictable...more
The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous...more
On May 23, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged...more
Precedential and Key Federal Circuit Opinions - ECOFACTOR, INC. v. GOOGLE LLC [OPINION] (2023-1101, 5/21/2025) (Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, Stark) - Moore, C.J. The en banc Court reversed...more
This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....more
One year ago today, the en banc Federal Circuit decided LKQ Corporation v. GM Global Technology Operations LLC, where it overturned the decades-old Rosen-Durling test for obviousness of a design patent for being “improperly...more
Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674...more
On April 18, 2025, the Court of Appeals for the Federal Circuit (CAFC) ruled in Recentive Analytics Inc. v. Fox Corp. et al. that new uses for established machine learning do not make the claims patent-eligible....more