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)
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 sufficiently described these guide RNAs and enabled at least one embodiment within the scope of the challenged claims. The decision highlights the application of the substantial-evidence standard for reviewing the Board’s factual findings, and reinforces the presumption that printed publications are enabled prior art.
Continue Reading The Power of Prophetic Disclosures
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
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 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
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
In LKQ v. GM, a May 21, 2024 en banc decision on an appeal of an IPR final written decision determining that the challenged claim of GM’s U.S. Design Patent No. D797,625 (directed to the design for a vehicle front fender) was not obvious, the Federal Circuit vacated and remanded the PTAB’s decision, overruling the Rosen–Durling test for obviousness of design patents and articulating general guidance for a new obviousness test it determined was more consistent with Supreme Court authority, in particular the “flexible standards” applied in Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), Graham v. John Deere, 383 U.S. 1 (1966), and KSR v. Teleflex, 550 U.S. 398 (2007).
Continue Reading Federal Circuit Reframes Test for Obviousness of Design Patents
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
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing patent was “analogous” to the one being challenged.
Mylan Pharmaceuticals had asserted all claims
On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, Paper No. 34. D’702 claimed a display screen having an animated graphical user interface (GUI).
Continue Reading PTAB Invalidates GUI, but Leaves Obviousness Test Gooey