News & Analysis as of

Inter Partes Review (IPR) Proceeding Patents Appeals

Alston & Bird

Patent Case Summaries | Week Ending April 18, 2025

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Recentive Analytics, Inc. v. Fox Corp., et al., No. 2023-2437 (Fed. Cir. (D. Del.) Apr. 18, 2025). Opinion by Dyk, joined by Prost and Goldberg (sitting by designation). Recentive sued Fox for infringing four patents that...more

McDermott Will & Emery

Transatlantic Terminology: Skilled Artisan Could Equate UK, US Word Meanings

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The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination, finding that a skilled artisan would have found the term “sterile” in a UK publication to mean the same as...more

Proskauer - The Patent Playbook

Federal Circuit Affirms Stem Cell Product-by-Process Claims: Lessons in Claim Construction and Inherency from Restem LLV v. Jadi...

The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more

Knobbe Martens

No Error: The Board Committed No Procedural Error by Relying on Evidence Outside of the Prior Art Reference

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SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Recentive Analytics, Inc., v. Fox Corp.

Recentive Analytics, Inc., v. Fox Corp., Appeal No. 2023-2437 (Fed. Cir. Apr. 18, 2025) In our Case of the Week, the Federal Circuit addressed a question of first impression concerning whether developments in machine...more

A&O Shearman

Federal Circuit Affirms PTAB Decision On Unpatentability, With The PTO Stepping In After Appellee Withdrew

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On April 15, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision finding all challenged claims of Sage Products, LLC’s patents anticipated based on...more

Sheppard Mullin Richter & Hampton LLP

Don’t Get Lazy, Timely Complete Your Arguments

This Federal Circuit Opinion analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness.  Gesture Technology Partners, LLC is the owner of U.S....more

Jones Day

Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

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Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via...more

Sheppard Mullin Richter & Hampton LLP

You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review

AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor...more

Knobbe Martens

Federal Circuit Review | March 2025

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Limits of Inherent Anticipation in Product-by-Process Claims - In Restem, LLC v. Jadi Cell, LLC, Appeal No. 23-2054, the Federal Circuit held that inherency in product-by-process claims requires the prior art to inevitably...more

McDonnell Boehnen Hulbert & Berghoff LLP

Recor Medical, Inc. v. Medtronic Ireland Mfg. (Fed. Cir. 2025)

The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims,...more

McDermott Will & Emery

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...more

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

The Federal Circuit Opines on a Motivation to Combine

The Federal Circuit’s holding in United Servs. Auto. Ass’n v. PNC Bank N.A., No. 2023-2171, 2025 WL 339662 (Fed. Cir. Jan. 30, 2025) reversed a Patent Trial and Appeal Board (“PTAB”) decision finding no motivation to combine....more

Womble Bond Dickinson

USPTO Implements Bifurcated Review Process for PTAB Petitions Under New Policy

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USPTO Acting Director Coke Morgan Stewart announced that she will personally decide whether to deny each petition challenging a patent on discretionary grounds before the Patent Trial and Appeal Board evaluates the merits....more

Vorys, Sater, Seymour and Pease LLP

New USPTO Processes Put in Place Regarding PTAB Institution Decisions

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) announced new interim procedures for handling discretionary denials of post-grant proceedings before the Patent Trial and Appeal Board (PTAB).  These changes are...more

Jones Day

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

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A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Issues Guidance on Discretionary Denials

In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more

Foley Hoag LLP

PTAB Changes Procedure for Determining Discretionary Denials

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Key Takeaways: - The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue. - Discretionary denial will have separate...more

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

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On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

BakerHostetler

Will Fewer PTAB Judges Increase the Rate of Discretionary Denials of IPRs and PGRs?

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The Acting Director of the United States Patent and Trademark Office just issued a memorandum setting out new procedures for discretionary denials of Inter Partes Reviews (IPRs) and Post-Grant Reviews (PGRs). The Acting...more

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

McDermott Will & Emery

When “It’s Obvious” Just Isn’t Enough: Challenger’s Burden to Prove Obviousness

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The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision that a patent was not obvious because the petitioner failed to show sufficient support of obviousness based on prior art. AMP...more

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

Knobbe Martens

Inaction Can Lead To Argument Forfeiture on Appeal

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ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board - A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation...more

Jones Day

Federal Circuit Affirms Despite Claim Construction Error

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The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous. The Court also rejected a...more

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