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Patents Patent Trial and Appeal Board Patent Invalidity

Holland & Knight LLP

Section 101 Patent Eligibility Roundup: An Informative PTAB Decision, Squires Speaks

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The Patent Trial and Appeal Board designated a recent decision as informative. In the decision, Coke Morgan Stewart, Acting Director of the U.S. Patent and Trade Office (USPTO), ended the petitioner's challenges, noting that...more

Jones Day

Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR

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Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...more

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

Jones Day

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior At Grounds

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In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid...more

McDermott Will & Emery

Designated Informative: PTO Director Declines IPR Institution Following District Court § 101 Invalidation

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The US Patent & Trademark Office (PTO) designated a recent Director Review decision as informative, signaling its significance for future proceedings. The decision emphasizes that a final district court ruling invalidating a...more

Akin Gump Strauss Hauer & Feld LLP

Claim Construction Issues and Large Number of Claims Not Enough to Institute a Second Petition for Inter Partes Review

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not...more

Jones Day

PTAB Denies Institution of IPRs in Apple v. Haptic

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In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more

Jones Day

INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case

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On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more

Jones Day

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

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In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more

Alston & Bird

Patent Case Summaries | Week Ending April 25, 2025

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Qualcomm Inc. v. Apple Inc., et al., Nos. 2023-1208, -1209 (Fed. Cir. (PTAB) Apr. 23, 2025). Opinion by Reyna, joined by Lourie and Prost. Qualcomm owns a patent related to integrated circuit devices using multiple power...more

Jones Day

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

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Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sage Products, LLC v. Stewart (Fed. Cir. 2025)

When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton...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

Jones Day

Expert Testimony Supporting POPR Can Be An Effective Strategy

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It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...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

Morgan Lewis

A New Era for the PTAB: Discretion Returns, Layoffs Loom, and Early Challenges Encouraged

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The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a...more

Fish & Richardson

EPRx 201: The Risks and Rewards of Ex Parte Reexamination

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Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...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

Kilpatrick

PTAB: Initial Fallout from the New Director Guidance on Discretionary Denial of Institution

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Last week, my partner Justin Krieger published an alert regarding Acting Director Stewart's new guidance on discretionary denial. Shortly thereafter, Acting Director Stewart issued a decision vacating institution of several...more

A&O Shearman

Federal Circuit Clarifies Requirements For A Prior Art Reference’s Entitlement To The Filing Date Of A Provisional Application To...

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On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision of the U.S. Patent Trial and Appeal Board (the “Board”) that a published patent application...more

McDermott Will & Emery

Construing Unambiguous Claim Language and Qualifying Challenged Expert as POSITA

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Addressing the issues of claim construction and the requisite expert qualifications to testify on obviousness and anticipation, the US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board decision...more

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

Product-by-Process Analysis: Invalidity ≠ Infringement

On March 4, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision in Restem, LLC v. Jadi Cell, LLC, No. 23-2054, 2025 WL 679195, at *1 (Fed. Cir. Mar. 4, 2025), finding that the patent...more

Jones Day

Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

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Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Vacates Claim Construction But Upholds PTAB’s Determination of Obviousness and Motivation to...

In this edition of The Precedent, we outline the Federal Circuit's decision in HD Silicon Solutions LLC v. Microchip Technology Inc. In HD Silicon Solutions LLC, the Federal Circuit addressed an appeal from the USPTO Patent...more

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