News & Analysis as of

CAFC United States Patent and Trademark Office

Volpe Koenig

The POSITA Under BRI: The Constraint That Keeps “Broad” from Becoming “Anything”

Volpe Koenig on

Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that...more

McDermott Will & Schulte

USPTO Director IPR institution discretion survives APA challenge

The US Court of Appeals for the Federal Circuit concluded that the United States Patent and Trademark Office’s (USPTO) framework for discretionary denials of inter partes review (IPR) is a general statement of policy, not a...more

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

2025 IP Year in Review Reports

Sterne Kessler’s IP Year in Review Reports provide a comprehensive analysis of key developments, trends, and cases that shaped the intellectual property landscape over the past year....more

Miller Johnson

Director of USPTO Reopens the Door to Design Patent IPRs

Miller Johnson on

Top Glory Trading Group Inc. and DP Dream Pairs Inc. v. Cole Haan LLC, IPR2025-01395 (P.T.A.B January 12, 2026) - A recent decision by United States Patent and Trademark Office (“USPTO”) Director Squires may signal renewed...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review – January 2026

This issue of The PTAB Review begins with a review of notable developments at the PTAB, including changes to institution procedures, and precedential and informative decisions. Next, the authors explore several appellate...more

Fenwick & West LLP

Federal Circuit Issues Precedential Decision Reframing Patent Eligibility Analysis Under Section 101

Fenwick & West LLP on

Patent eligibility decisions are not new. Courts have grappled with what can and cannot be patented for years, especially in the technology and software spaces. A recent decision from the U.S. Court of Appeals for the Federal...more

Cooley LLP

PTAB Rehearing Limits Double Patenting Rejections of Earlier Patent Applications From Later-Filed Family Members

Cooley LLP on

In Ex parte Baurin (Appeal 2024‑002920), the Patent Trial and Appeal Board (PTAB) denied the examiner’s request for rehearing and reaffirmed its prior reversal of six nonstatutory obviousness‑type double patenting (ODP)...more

Alston & Bird

Patent Case Summaries | Week Ending January 9, 2026

Alston & Bird on

Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial...more

McDermott Will & Schulte

Direct injection fuel dispute fizzles

The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s...more

Baker Botts L.L.P.

Intellectual Property Report - January 2026

Baker Botts L.L.P. on

As discussed in our previous article, Comcast sought mandamus relief after Judge Gilstrap of the Eastern District of Texas denied the company’s motion to dismiss or transfer for improper venue....more

McDermott Will & Schulte

Institution decisions off limits: Federal Circuit rejects mandamus petitions based on due process, “settled expectations”

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit denied mandamus relief to three petitioners after the United States Patent and Trademark Office (USPTO) denied inter partes review (IPR) institution....more

A&O Shearman

Federal Circuit Rejects Mandamus Petition Challenging Discretionary Denials

A&O Shearman on

On November 6, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a decision denying a petition for writ of mandamus relief from the discretionary deinstitution of inter partes reviews (“IPRs”). In re...more

Miller Johnson

Federal Circuit Shuts Down Attempt to Use IPR Estoppel to Stop Reexams 

Miller Johnson on

In re Gesture, Case No. 25-1075 (Fed. Cir. Dec. 1, 2025) - Ex parte reexaminations and inter partes review (“IPR”) are two different procedures available at the United States Patent and Trademark Office (“PTO”) to...more

Haug Partners LLP

In re Motorola and the Return of PTAB Discretion Revisiting Fintiv, Sotera, and the Limits of Judicial Review

Haug Partners LLP on

The Patent Trial and Appeal Board’s (“PTAB’s”) authority to exercise discretion over whether to institute Inter Partes Review (“IPR”) proceedings has become one of the most consequential features of post-grant practice before...more

Holland & Knight LLP

Top Section 101 Patent Eligibility Stories of 2025

Holland & Knight LLP on

Top off the eggnog, straighten the twinkle lights and clear a space between the nutcrackers and the model train set for a fresh stack of Top Section 101 Stories of the Year. It's our annual sleigh ride through Section 101....more

Jones Day

USPTO Director Institution Decisions: Back To The Future?

Jones Day on

USPTO Director Squires recently published an open letter announcing that he was “Bringing the USPTO Back to the Future” by assuming responsibility for all IPR and PGR institution decisions. Why the reference to the 1980s...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same

On February 13, 2024, then-USPTO Director Vidal issued inventorship guidance for AI-assisted inventions; on November 28, 2025, new USPTO Director Squires revoked and replaced it. But both the earlier guidance and current...more

Sheppard

Claim Construction: Indefinite or Clerical Error?

Sheppard on

This Federal Circuit opinion analyzes the “very demanding standard” of judicial correction of erroneous wording of a patent claim. Background - Canatex Completion Solutions owns U.S. Patent No. 10,794,122. This patent...more

Miller Johnson

IPR Uncertainty: Sotera Stipulations No Longer “Dispositive”

Miller Johnson on

In re Motorola Solutions, Inc., No. 25-134, 2025 WL 3096514 (Fed. Cir. Nov. 6, 2025) - If you were hoping a Sotera stipulation would bulletproof your Inter Partes Review (“IPR”) petiton from a discretionary denial, the...more

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

IP Hot Topic: Is This Clear Enough? A Caution Against Claiming Transparency but Excluding Translucency From a Design Patent’s...

A U.S. design patent protects how something looks, as opposed to how it works. An applicant conveys that look primarily using drawings. Typically they use line drawings, so that the scope of protection is focused on the shape...more

Bradley Arant Boult Cummings LLP

When Courts Can Fix Patent Claim Errors: Federal Circuit Reverses Indefiniteness Ruling in Oil and Gas Equipment Case

The Federal Circuit’s recent decision in Canatex Completion Solutions, Inc. v. Wellmatics, LLC is a good example of the courts’ ability to correct obvious errors in patent claims through claim construction....more

Knobbe Martens

Green With Envy: When Your Color Trademark Turns Out to Be Generic

Knobbe Martens on

PT Medisafe Technologies (“Medisafe”) has petitioned the U.S. Supreme Court to review a Federal Circuit decision upholding the Trademark Trial and Appeal Board’s (“TTAB”) refusal to register Medisafe’s dark green color mark...more

Knobbe Martens

Nothing Unusual With Recusal Refusal

Knobbe Martens on

Centripetal Networks, LLC, v. Palo Alto Networks, Inc. - Before Moore, Hughes, and Cunningham. Appeal from the Patent Trial and Appeal Board. Despite affirming the denial of Centripetal’s recusal motion as untimely and...more

McDermott Will & Schulte

Complete inventive entity required to avoid “by another” prior art under pre-AIA § 102(e)

McDermott Will & Schulte on

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious....more

Morgan Lewis

The In re Motorola CAFC Ruling Reaffirms Discretionary, Nonappealable Nature of PTAB IPR Institution Decisions

Morgan Lewis on

The Federal Circuit’s latest ruling in In re Motorola Solutions, Inc. solidifies the discretionary authority of the USPTO director over inter partes review institution decisions, underscores the limited scope of judicial...more

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