4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation
Behaving Badly: OpenSky v. VLSI and Sanctions at the PTAB — Patents: Post-Grant Podcast
Scott McKeown Discusses PTAB Trends and Growth of Wolf Greenfield’s Washington, DC Office
USPTO Director Review — Patents: Post-Grant Podcast
The Briefing: Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Podcast: The Briefing - Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Disputing Patent-Eligible Subject Matter in PGRs and IPRs - Patents: Post-Grant Podcast
Reexamination in IPR and PGR Practice – Patents: Post-Grant Podcast
Reissue in IPR and PGR Practice – Patents: Post-Grant Podcast
3 Key Takeaways | Third party Prior Art Submissions at USPTO
Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast
JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges
IPR Institution and Early Intervention - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
Nota Bene Episode 99: Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters
Fallout from the Fintiv Precedential Decision
Six Things You Should Know About Inter Partes Review
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
Precedential and Key Federal Circuit Opinions - STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION [OPINION] (2023-1790, 1/24/2025) (Moore, Hughes, Cunningham) - Moore, Chief J. The Court reversed the district...more
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
The US Court of Appeals for the Federal Circuit rejected a bright-line rule that patent infringement notice letters and related communications can never form the basis for specific personal jurisdiction. Apple Inc. v. Zipit...more
APPLE INC. v. MPH TECHNOLOGIES OY - Before Moore, Prost, and Taranto. Appeal from Patent Trial and Appeal Board. Summary: The proximity of concepts in a claim may link the concepts together and affect the plain meaning...more
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
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
The Federal Circuit has provided additional guidance about an appellant’s standing to appeal IPR decisions after settling the related litigations and entering into patent license agreements. In its second decision between...more
The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying...more
On November 10, in Apple Inc. v. Qualcomm Incorporated, for the second time, and in a 2-1 decision by a different panel, the Federal Circuit held that Apple lacked standing to appeal final decisions in inter partes review...more
APPLE, INC. v. QUALCOMM, INC. Before Newman, Prost, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents that Apple licenses from...more
In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm. Background - Qualcomm sued...more
The US Court of Appeals for the Federal Circuit found that 35 USC § 314(d) did not bar its review of a Patent Trial & Appeal Board determination that a petitioner was not estopped from maintaining inter partes review (IPR)...more
PATENT CASE OF THE WEEK - Apple Inc. v. Voip-Pal.com, Inc., Appeal No. 2018-1456, -1457 (Fed. Cir. Sept. 25, 2020) - In our Case of the Week, the Federal Circuit addressed two novel issues following inter partes review...more
In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies...more
PATENT CASE OF THE WEEK - Uniloc 2017 LLC v. Apple, Inc., Appeal Nos. 2019-1922, -1923, -1925, -1926 (Fed. Cir. July 9, 2020) - This week’s case of the week focuses, not on a patent issue, but on a procedural issue common...more
Addressing whether the Patent Trial and Appeal Board (PTAB or Board) too narrowly read its rules limiting reply briefs in an inter partes review (IPR) to preclude a petitioner’s argument as a “new theory of unpatentability,”...more
PATENT CASE OF THE WEEK - Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020) - Our case of the week concerns issues particular to inter partes review...more
Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more
Broadest Reasonable Interpretation Encompasses All Embodiments in the Absence of Support Specifically Excluding an Embodiment - In Steuben Foods, Inc. v. Nestle USA, Inc., Appeal No. 2017-1290, the Federal Circuit...more
Federal Circuit Summaries - Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: When resolving an obviousness challenge, the PTAB cannot invoke “ordinary creativity” of a skilled...more
The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of...more
In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings. The Court explained...more
Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more
In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more