News & Analysis as of

Patent Act Inter Partes Review (IPR) Proceeding

Alston & Bird

Patent Case Summaries | Week Ending January 16, 2026

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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

Volpe Koenig

From Shield to Sword: Using Examiner-Considered Art to Beat § 325(d)

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In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d)....more

McDermott Will & Schulte

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

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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

Thompson Coburn LLP

IP Corner – October 2025 Edition

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Welcome to TC’s IP Corner® Halloween edition. We are excited to share this quarterly newsletter with our clients, colleagues, and friends as we examine hot topics, interesting cases, and weird yet entertaining happenings in...more

Morrison & Foerster LLP

The Director Decides: AIA Institution Authority No Longer Delegated To The PTAB

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On October 17, 2025, almost one month after being sworn in as the Director of the USPTO, John Squires returned institution authority for proceedings under the America Invents Act (“AIA”) to himself. Previous Directors had...more

Foley & Lardner LLP

USPTO Issues Proposed Rulemaking On Discretionary Denials of IPR Proceedings

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In the first proposed rulemaking issued under Director Squires, the USPTO proposes to modify the rules of practice relating to discretionary denials to institute Inter Partes Review (IPR) proceedings. The proposed rules...more

McDermott Will & Schulte

Associational standing requires concrete, non-speculative harm

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The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the...more

Jones Day

Prior Art Asserted in Second Petition Should Have Been Asserted in the First

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The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Jones Day

HE HAD THE POWER – Hirshfeld Decisions Stand

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A panel of the Federal Circuit has again held that Commissioner Drew Hirshfeld had the requisite authority to act on requests for Director review of PTAB decisions during which the office of Director was vacant. Fall Line...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022 #3

Polaris Innovations Ltd. v. Brent, Appeal No. 2019-1483 (Fed. Cir. Sept. 15, 2022) - In our Case of the Week, the Federal Circuit provided what appears to be its first precedential opinion construing Section 317 of the...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

Snell & Wilmer

Supreme Court Grants Certiorari to Resolve Long-Running Debate on Assignor Estoppel

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Last Friday, the U.S. Supreme Court granted certiorari in Minerva Surgical v. Hologic, thereby agreeing to resolve a long-running debate on patent law’s doctrine of assignor estoppel. Minerva Surgical has asked the Court to...more

Bradley Arant Boult Cummings LLP

High Court to Review Whether Assignor Estoppel Prevents Assignor from Filing an IPR or Relying on a Prior Invalidity Decision

Last spring in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit ruled that the doctrine of assignor estoppel does not prevent an assignor from lodging a validity challenge of either patent in an IPR proceeding. In...more

International Lawyers Network

Can Patent Claims be Cancelled Based on Indefiniteness by the PTAB during an IPR?

For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2020 #3

PATENT CASE OF THE WEEK - Schwendimann v. Arkwright Advanced Coating, Inc., Appeal Nos. 2018-2416, et al. (Fed. Cir. May 5, 2020) (unsealed May 13, 2020) - In this recently unsealed precedential opinion, the Federal...more

Sunstein LLP

Fresh is Best and Stale Will Fail: The PTAB Explains Its Logic in Refusing to Institute an IPR

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The Patent Act allows anyone to try to initiate an inter partes review (IPR), which is a proceeding before the Patent Trial and Appeal Board (PTAB) challenging one or more claims of a patent. Any such challenge may be based...more

Brownstein Hyatt Farber Schreck

Arthrex: Administrative Patent Judges Found Unconstitutional

In a surprising precedential ruling, with the potential to vacate past decisions by administrative patent judges (“APJs”) of the U.S. Patent and Trademark Office (“USPTO”), the Court of Appeals for the Federal Circuit ruled...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2018 #5

Applications in Internet Time, LLC v. RPX Corp., Appeal Nos. 2017-1698, et al. (Fed. Cir. July 9, 2018) (unsealed July 24, 2018) In a lengthy decision on an issue of first impression, the Federal Circuit addressed the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Four Stories of 2017

After reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories. For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe...more

Jones Day

Burden of Proving Unpatentability of Amended Claims Placed on IPR Petitioners

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In an en banc decision, the Federal Circuit in Aqua Products, Inc. v. Matal addressed the question of who bears the burden of proving that claims amended during inter partes review ("IPR") proceedings are or are not...more

Brooks Kushman P.C.

Supreme Court 2015-2016 Intellectual Property Case Review

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At the end of June, the U.S. Supreme Court’s October 2015 term came to a close. The Court issued written decisions in three intellectual property cases during that term, the same number of cases as during the previous term,...more

Fish & Richardson

Legislative Developments in Post-Grant Proceedings

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Amidst a spate of high-profile IPR filings in the life sciences space by hedge fund financiers, the biotechnology industry has mobilized behind two chief legislative strategies designed to limit or eliminate its exposure to...more

King & Spalding

Intellectual Property Newsletter - September/October 2015

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PTAB Update on Inter Partes Review - On August 19, 2015, the Director of the USPTO released a blog post reporting on the state of post-grant review proceedings created by the Leahy-Smith America Invents Act of 2011 and...more

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