Inter Partes Review / IPR

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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), particularly 5 U.S.C. § 706 (link). Apple Inc. v. Vidal, No. 20-CV-06128 (N.D. Cal. Mar. 31, 2024). Apple complained that the guidance led to too many discretionary denials of meritorious petitions and was otherwise also legally defective. When the lawsuit was filed, the Board made these institution decisions. Today, the Director does. The guidance is therefore largely meaningless unless the Director again delegates this task to the Board. Nonetheless, the Federal Circuit recently affirmed the district court’s rejection of Apple’s APA challenge. Apple Inc. v. Squires, Appeal 2024-1864 (Fed. Cir. Feb. 13, 2026).Continue Reading The Propriety and Cost of Discretionary Denial

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

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…

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 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.