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 Ethanol Boosting Systems, LLC v. Ford Motor Company, Appeal 2024-1381 (Fed. Cir. Dec. 23, 2025) (“EBS”), the Federal Circuit addressed this scenario, providing a practical reminder of the limits of appellate review and the Board’s procedural discretion.

Continue Reading PTAB’s Delay in Instituting IPRs Is Not Reviewable on Appeal

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…

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…

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…

To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Our precedent is clear—nothing more is required.

In Osseo Imaging, LLC v. Planmeca USA, Inc., the Federal Circuit addressed the qualifications necessary to…

In ParkerVision, Inc. v. Qualcomm Inc., No. 2022-1755, -2221 (Fed. Cir. Sept. 6, 2024) (“ParkerVision III”), the Federal Circuit held that, due to the difference in burdens of proof in PTAB IPR proceedings and in district court cases, collateral estoppel cannot be applied in a district court case based on findings made…

In Voice Tech Corp v. Unified Patents, LLC, the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims of Voice Tech’s patent were unpatentable for obviousness, determining that the PTAB’s findings were supported by substantial evidence. At issue were claims 1-8 of U.S. Patent No. 10,491, 679, which relates to use of…

In Virtek Vision Int’l. ULC v. Assembly Guidance Systems, Inc. the Federal Circuit reversed in part the PTAB’s final written decision in an IPR petition filed by Assembly Guidance, on the basis that the petition failed to identify a motivation to combine elements present in the prior art, stating that: “A reason for combining must exist.” Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882, 888 (Fed. Cir. 2024). The Court determined that Assembly Guidance had failed to provide any reasoning why one skilled in the art would be motivated to combine the disclosures of the prior art references, and therefore did not show that the challenged claims were unpatentable.

Continue Reading Give Me ONE Reason: Federal Circuit Requires At Least One Reason for Motivation to Combine
Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.