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Inter Partes Review (IPR) Proceeding Patents CAFC

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Qualcomm Inc. v. Apple Inc.

Qualcomm Inc. v. Apple Inc., Appeal Nos. 2023-1208, -1209 (Fed. Cir. Apr. 23, 2025) - For a second time in this case, the Federal Circuit considered the proper role of “Applicant Admitted Prior Art” in an inter partes...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

A&O Shearman

Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

Irwin IP LLP on

Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Fenwick & West LLP

En banc Hearing Petition Filed on Recent Fed. Circ. Collateral Estoppel Decision

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The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more

A&O Shearman

Standing & Product Development: Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

A&O Shearman on

In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

A&O Shearman

Federal Circuit Provides Guidance On Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)

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On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more

Dinsmore & Shohl LLP

Estoppel Principles in Patent Office Proceedings

Dinsmore & Shohl LLP on

On July 26, 2024, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld and expounded on the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). The CAFC confirmed that the Patent...more

Jones Day

Another Bite? CAFC Allows Expansion of Arguments in Reply

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In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Irwin IP LLP

CAFC Holds Priority Favors True Trailblazers, Not Maze-Like Paths Through a Forest of Prior Applications: Regents of the...

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The Court of Appeals for the Federal Circuit (“CAFC”) recently upheld a decision of the Patent Trial and Appeal Board (“PTAB”) that found some claims of U.S. Patent 8,815,830 (“the ’830 patent”) unpatentable as anticipated....more

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

In Hunting Titan v. DynaEnergetics, Federal Circuit Affirms Precedential Opinion Panel But Avoids Ruling on a Standard for Sua...

In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In...more

Troutman Pepper Locke

Federal Circuit Clarifies Scope of IPR Estoppel

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Parties filing inter partes review (IPR) petitions should be aware of the estoppel implications on subsequent or parallel proceedings, including litigation pending in U.S. federal district courts. The U.S. Court of Appeals...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

Jones Day

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

Jones Day on

Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more

Jones Day

Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row

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The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more

WilmerHale

CAFC Patent Cases - April 2021

WilmerHale on

Precedential Federal Circuit Opinions - ..WI-LAN INC. v. SHARP ELECTRONICS CORPORATION [OPINION]  (2020-1041, April 6, 2021) (DYK, TARANTO, and STOLL) - Dyk, J.  Affirming related district court judgments holding...more

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

Uniloc v. Facebook: Federal Circuit Rules Against a Finding of Estoppel in Joinder

Earlier this month, in the precedential decision Uniloc 2017 LLC v. Facebook Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) on the issue of estoppel (or...more

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

Mixed Result in M&K Holdings v. Samsung Electronics: Federal Circuit Finds Anticipation not Necessarily Inherent in Obviousness...

Earlier this month, in the precedential decision M & K Holdings v. Samsung Electronics Co., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) in finding certain...more

Foley & Lardner LLP

Arthrex Amicus Briefs – Novel Arguments for the Court To Consider

Foley & Lardner LLP on

On December 2nd, amicus briefs in support of Smith & Nephew and the United States were filed with the Supreme Court in the Arthrex cases. There were also several amicus briefs filed in support of no party. Previous articles...more

Foley & Lardner LLP

CBM Review: A Postmortem

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Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak...more

Mintz - Intellectual Property Viewpoints

Fox Factory v. SRAM – According to CAFC, No Presumption of Nexus for Bicycle Chainring Patents; IPR Decision Reversed and Remanded

On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”)...more

Mintz - Intellectual Property Viewpoints

Relying on Outside Prior Art in an IPR – Not so fast!

The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds...more

Polsinelli

The PTAB and the Arthrex Decision: A Constitutional Question

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The Appointments Clause of the U.S. Constitution1 provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand,...more

Kilpatrick

Federal Circuit Approves Post-SAS procedures of Instituting all Claims and all Grounds for IPR Decisions.

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In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged...more

Sunstein LLP

Section 101 Gains a Toehold in IPRs

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Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more

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