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
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
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
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
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
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)
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
In Lynk Labs v. Samsung Electronics, the Federal Circuit determined that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” The Court affirmed the PTAB’s determination that challenged claims of U.S. Patent No. 10,687,400 (the ’400 patent), which relates to light emitting diodes (LEDs), are
In a decision that underscores the importance of prior art in the context of AI patents, the PTAB recently issued a final decision in Tesla, Inc. v. Autonomous Devices, LLC, IPR2023-01173 (PTAB January 3, 2025), invalidating all challenged claims of U.S. Patent Number 11,055,583 (the “’583 patent”). The case provides some insight into how the
