Focusing on the Patent Trial & Appeal Board of the US Patent & Trademark Office.
The Federal Circuit recently affirmed a Board decision canceling all but five challenged claims, which survived not on their merits, but because the petitioner failed to adequately argue they were unpatentable. Keysight Techs., Inc. v. Centripetal Networks, LLC , Appeal 2025-1053 (Fed. Cir. July 21, 2026) (nonprecedential). Each surviving claim depends upon a base claim the Board concluded was…
In mCom IP, LLC v. City National Bank of Florida (Fed. Cir. May 15, 2026), the Federal Circuit affirmed a district court decision dismissing mCom’s patent infringement complaint under Rule 12(b)(6) for failure to state a claim, on the basis that the asserted claims of mCom’s U.S. Patent No. 8,862,508 (relating to electronic banking systems) were not materially different from claims of…
Last month, in Federal Express Corp. v. Qualcomm Inc. , Appeal No. 2024‑1236 (Fed. Cir. Apr. 29, 2026), the Federal Circuit again addressed the reach of the statutory bar on its review of Patent Trial and Appeal Board decisions to institute inter partes reviews. The case arose from Qualcomm’s IPR petition challenging a FedEx patent that FedEx was already asserting against a third party in…
In 2020, Apple and several other parties collectively sued the Patent Office in a U.S. district court in California. They alleged that guidance* the Director gave the Patent Trial and Appeal Board—on how, while parallel patent litigation was pending, to exercise the Director’s discretion to deny inter partes review petitions—violated the Administrative Procedure Act (APA),…
Last summer, the Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that claims in a pair of patents owned by Agilent Technologies claiming chemically modified CRISPR guide RNAs are unpatentable. Agilent Techs., Inc. v. Synthego Corp. , 139 F.4th 1319 (Fed. Cir. 2025). The court agreed that an earlier published international patent application filed by Pioneer Hi‑Bred…
The Federal Circuit’s decision last fall in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc. , Appeals 2025‑1210, ‑1211 (Fed. Cir. Oct. 30, 2025), reh’g and reh’g en banc denied (Jan. 22, 2026) ( link ), offers important guidance on the meaning of disclosures “by another” under pre-AIA 35 U.S.C. §§ 102(a) and (e)—a word-pairing that often determines…
Practitioners before the Patent Trial and Appeal Board are well-acquainted with the statutory bar on judicial review of institution decisions. But what happens when the Board defers—for more than a year—a decision to rehear its non-institution decision, waiting for the Federal Circuit to clarify claim construction in parallel litigation involving the same patent and same parties? In…
In Ex parte Desjardins , Appeal 2024-000567 (Review Panel of the PTAB, Sept. 26, 2025), the PTAB Appeals Review Panel (“Review Panel”) vacated a decision of the PTAB that had sua sponte entered a new ground of rejection of claims relating to artificial intelligence (AI) systems under 35 U.S.C. § 101. The new Under Secretary of Commerce and USPTO Director, John Squires, authored…
Seven years after the PTAB instituted the first AIA derivation proceeding , the Federal Circuit finally issued its first opinion in an appeal of a derivation decision, Global Health Solutions, LLC v. Selner , No. 23-2009 (Fed. Cir. 2025), affirming the Board’s decision that the petitioner did not carry its burden to show respondent (Selner) derived the invention from the petitioner’s…
In Sierra Wireless v. Sisvel S.P.A ., Appeals 2023-1059, -1085, -1089, -1125 (Fed. Cir. Mar. 10, 2025), the Federal Circuit vacated and remanded a PTAB decision that had found claims 1, 2, and 6-8 of U.S. Patent No. 7,869,396 (“the ’396 patent”) obvious. In particular, the Federal Circuit found that the features in claim 1 of the ’396 patent were not conditional, and gave…