Inter Partes Review

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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 whether a reference qualifies as prior art during prosecution and in litigation (including in inter partes review (IPR) proceedings).* The court’s opinion not only affirmed the Patent Trial and Appeal Board’s conclusion of obviousness in these IPRs but also clarified the legal standard for inventive entity identity, drawing heavily on the CCPA’s decision in In re Land, 368 F.2d 866 (CCPA 1966).Continue Reading The High Hurdles in Disqualifying Prior Art

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 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…

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

As discussed in a recent post, On May 21, 2024, the Federal Circuit issued its en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC, significantly impacting design patent law. The court overturned the long-standing Rosen–Durling test, a two-part test used to assess the obviousness of design patents. This decision is expected to have far-reaching implications for patent practitioners and clients alike.Continue Reading Federal Circuit Abandons Rosen-Durling Test for Design Patent Obviousness

Can a defendant who prevails in an exceptional patent infringement suit by invalidating the patent in inter partes review (IPR) recover its associated Patent Office-related attorney’s fees? A split three-judge panel of the Federal Circuit recently said no in Dragon Intellectual Property LLC v. Dish Networks LLC, Appeal Nos. 2022-1621, -1777, Slip Op. at 8 (Fed. Cir. May 20, 2024) (“Dragon V”). This blogsite previously discussed (link) several instances where courts, including the Federal Circuit, have authorized this recovery when the Patent Office proceedings substituted for aspects of the district court litigation between the same parties. How then did this two-judge majority conclude otherwise?Continue Reading Federal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA Trials

On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM’s claimed design, prompting LKQ to appeal to the Federal Circuit. On appeal, LKQ argued that the PTAB’s obviousness analysis utilized tests overruled by the Supreme Court’s decision in KSR, and, as such, the obviousness standard for design patents should mirror the standard for utility patents set forth in KSR. However, a three-judge panel of the Federal Circuit disagreed, noting in relevant part that “it is not clear the Supreme Court has overruled” the tests for obviousness applied by the PTAB.Continue Reading Federal Circuit to Decide Whether KSR Applies to Design Patents

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.