The USPTO’s recent guidance on discretionary denials has shifted patent practitioners back to the Fintiv and Sotera Wireless framework.
The Prior Framework: Fintiv & Sotera Wireless
In Apple Inc. v. Fintiv, Inc., No. IPR2020-00019 (PTAB Mar. 20, 2020), the Patent Trial and Appeal Board (the “Board”) implemented a holistic view of six factors (the
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) proceedings: inconsistent claim construction arguments between district court litigation and PTAB petitions.
Claim Construction Inconsistency
The PTAB’s holding centered on Petitioner’s proposed construction
The Federal Circuit’s holding in United Servs. Auto. Ass’n v. PNC Bank N.A., No. 2023-2171, 2025 WL 339662 (Fed. Cir. Jan. 30, 2025) reversed a Patent Trial and Appeal Board (“PTAB”) decision finding no motivation to combine. The opinion is nonprecedential, but the Federal Circuit’s analysis of the facts in light of recent precedent
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 challenger failed to prove that the claims were unpatenable and offering two key takeaways.
The
On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” which had been issued by former USPTO Director Kathi Vidal.
The 2022 Memorandum was intended to clarify the Patent
On January 27, 2025, the Federal Circuit held that the Patent Trial and Appeal Board (“PTAB”) “has jurisdiction over IPRs concerning expired patents.” See Apple Inc. v. Gesture Tech. Partners, LLC, 2025 WL 299939, *2 (Fed. Cir. Jan. 27, 2025).
Background and Procedural History
Apple, the inter partes review (“IPR”) petitioner, filed an IPR
The Federal Circuit’s recent decision in Palo Alto Networks, Inc. v. Centripetal Networks, LLC, No. 2023-1636, 2024 WL 5114204 (Fed. Cir. Dec. 16, 2024) concerns an obviousness determination based on a motivation to combine. Below is a discussion of the case and a key takeaway for patent practitioners and innovators.
Before the Patent Trial
With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the most impactful processes that grew during Vidal’s tenure — Director Review. It was not until shortly
The recent decision by the Federal Circuit in Honeywell International Inc. v. 3G Licensing, S.A., issued on January 2, 2025, overturned the Patent Trial and Appeal Board’s (“the Board”) factual and legal holdings in the final written decision of IPR2021-00908. In this article, we delve into the court’s holding and its impact on upcoming
At the end of each fiscal year running from October 1 through September 30, the Patent Trial and Appeal Board (“PTAB”) provides a summary of its trial statistics. [1] This information provides practitioners with useful insight into trends at the PTAB regarding petitions filed, institution rates, and outcomes. This blog post highlights the statistics and