News & Analysis as of

Patent Trial and Appeal Board

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

McGuireWoods LLP

Role of USPTO’s Delegated Rehearing Panel Changing With New Administration

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Coke Morgan Stewart, named on Inauguration Day 2025 as deputy director of the U.S. Patent and Trademark Office (USPTO) and now serving as acting director of the USPTO, has already indicated that she will manage Director...more

Arnall Golden Gregory LLP

Federal Circuit Delivers Blow to AI-Based Patents in Precedential Decision

On April 18, 2025, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Recentive Analytics, Inc. v. Fox Corp. The Federal Circuit held that the Asserted Patents — which relate to methods of...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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: PTAB Decision of Invalidity Cannot Estop District Court Litigation on Different Claims from the Same Patent, Even...

The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...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

Irwin IP LLP

Your “Chicken Scratch” May Be Confusing 

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In Re R.S. Lipman Brewing Co., LLC, 2025 WL 1099603 (Fed. Cir. Apr. 14, 2025) - Be careful when selecting a name for your product, otherwise you might find yourself cooked at the United States Patent and Trademark Office...more

Proskauer - The Patent Playbook

Navigating Parallel Proceedings: Lessons Learned As Time Runs Out for AliveCor in its Apple Smartwatch Patent Dispute

On March 7, 2025, the Federal Circuit issued a decision resolving the ongoing patent litigation between AliveCor and Apple concerning methods of cardiac monitoring purportedly employed in certain of Apple’s Watches. The...more

Jones Day

PTAB Finds Petition Time Barred

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In 2985 LLC d/b/a Mountain Voyage Company, LLC v. The Ridge Wallet LLC, a Patent Trial and Appeal Board (“PTAB”) panel denied inter partes review (“IPR”) institution where the petition was time barred under 35 U.S.C. § ...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

Venable LLP

Spotlight On: Actemra® (tocilizumab) / Tofidence™ (tocilizumab-bavi) / Tyenne® (tocilizumab-aazg) / Avtozma® (tocilizumab-anoh) -...

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Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more

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

Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...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

Venable LLP

Spotlight On: Rituxan® (rituximab) / Truxima® (rituximab-abbs) / Ruxience® (rituximab-pvvr) / Riabni™ (rituximab-arrx) - April...

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Rituximab Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

Proskauer - The Patent Playbook

Patent Litigation and the Rise of Quantum Computing: What to Watch for in the Next Decade

A recent Patent Trial and Appeal Board decision related to hybrid quantum computing paves the way for more quantum computing-related patents, and potential litigation....more

Alston & Bird

Patent Case Summaries | Week Ending April 4, 2025

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In re: Forest, No. 2023-1178 (Fed. Cir. (PTAB) Apr. 3, 2025). Opinion by Chen, joined by Taranto and Schall.  In 2016, an inventor filed a patent application that claimed priority to an application filed in 1995. The Patent...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

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

Understanding the PTAB’s Recent Informative Decision: Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR)...more

MoFo Tech

Federal Circuit Clarifies Requirements for Prior Art Under Pre-AIA 35 U.S.C. § 102(e)

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Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...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

McDermott Will & Emery

A Patent Without a Pulse: Provisional Rights Don’t Outlive the Patent

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a patent applicant seeking provisional rights on a patent that would issue only after it had already expired, finding that the applicant lacked the...more

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