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Patent Act Patent Trial and Appeal Board

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

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

Foley & Lardner LLP

Safeguarding AI Innovation in Stem Cell Therapy

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The use of artificial intelligence (AI) to advance stem cell therapy has produced exciting results, with a key role in driving recent growth and innovation. Separated into three parts, this article provides an overview the...more

Buckingham, Doolittle & Burroughs, LLC

Amgen Ratifies CAFC’s Requirement to Enable a Claim’s Full Scope

The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2023 #2

In re: John L. Couvaras, Appeal No. 2022-1489 (Fed. Cir. June 14, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeals Board decision that a patent application’s...more

Jenner & Block

Client Alert: Supreme Court Affirms High Enablement Bar for Drug Patents

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On May 18, 2023, the Supreme Court affirmed the Federal Circuit’s (CAFC) decision on enablement in Amgen Inc. v. Sanofi, 987 F.3d 1080 (CA Fed. 2021). The Court thus left in place a significant decision making it more...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

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

Mintz - Intellectual Property Viewpoints

Supreme Court Rejects USPTO Attorney Fee Policy

On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO...more

Knobbe Martens

Patent Applicant Not Required to Pay PTO’s Attorneys’ Fees in District Court Suit to Obtain a Patent

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PETER V. NANTKWEST, INC. Before Sotomayor, Roberts, Ginsburg, Breyer, Alito, Kagan, Gorsuch, and Kavanaugh. Appeal from the Federal Circuit on rehearing en banc. Summary: A patent applicant appealing an adverse decision...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

Jones Day

Federal Circuit Says Appointment of PTAB Judges Unconstitutional

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Last Thursday, the Federal Circuit found the appointments of Patent Trial and Appeal judges unconstitutional, in part because the judges do not receive sufficient oversight from the Director of the United States Patent and...more

Goodwin

Federal Circuit Rules On Constitutionality of PTAB Judge Appointments

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Last week, the Federal Circuit released its ruling on the constitutionality of Patent Trial and Appeal Board judge appointments (Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 2018-2140 (Fed. Cir. October 31, 2019))....more

McDonnell Boehnen Hulbert & Berghoff LLP

In re General Electric Co. (Fed. Cir. 2019)

Since the present reissue statute was enacted as part of the 1952 Patent Act, the Patent Office has granted almost eight million utility patents and less than twenty-five thousand reissue patents.  Nevertheless, reissue...more

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