In Regents of the University of California v. Broad Institute, Inc., the Federal Circuit addressed the issue of conception and reduction to practice as related to the written description of multiple patent applications.
Continue Reading PTAB Overly Relied on Statements of Doubt in Determining Conception and Reduction to Practice in Interference Proceedings
In a setback for automakers, the Patent Trial and Appeal Board (PTAB) has once again upheld the validity of Neo Wireless’s U.S. Patent No. 10,447,450, rejecting challenges brought by several major automakers. The most recent decision, Ford Motor Co. v. Neo Wireless (Sept. 3, 2025), follows last year’s similar outcome in American Honda, GM, Nissan & Tesla v. Neo Wireless (Nov. 1, 2024).
Continue Reading PTAB Again Upholds the Heavily Litigated Neo Wireless Patent: What the Latest Decisions Mean for Automakers
This Federal Circuit opinion analyzes various key issues in patent litigation, including the role of applicant admitted prior art (“AAPA”), standing, and obviousness.
Continue Reading Navigating Shockwave Medical: Applicant Admitted Prior Art, Standing, and Obviousness
In a recent decision with important implications for artificial intelligence (AI) driven innovation, the Patent Trial and Appeal Board (PTAB) denied a patent for an AI-based medical tool.[1] The refusal was not because the invention was not new or inventive. Rather, the refusal was because the invention did not meet a fundamental rule of U.S. patent law. In Ex parte Michalek, the PTAB specifically acknowledged that the patent claims at issue recited new information about the nexus between certain biomarkers and the development of lung cancer as facilitated by machine learning. In fact, prior to appeal, the applicant had successfully refuted all arguments raised by the patent examiner that the invention was not new or nonobvious. That said, based on U.S. Patent Office guidance and a related example from that guidance, the PTAB still determined the claims were flawed based on the legal principle of subject matter eligibility. Although the facts in this decision concern medical health innovation, the decision is helpful to inform patent strategy for AI-enabled inventions across various disciplines and industries.
Continue Reading PTAB Rejects AI-Driven Medical Patent – Not for Novelty, But Eligibility
This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application’s priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e).
Continue Reading Is it Prior Art? Check the Provisional Application!
Qualcomm Incorporated v. Apple Inc., No. 23-1208 (Fed. Cir. 2025)—On April 23, 2025, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding that claims of Qualcomm’s U.S. Patent No. 8,063,674 (“the ’674 Patent”) are unpatentable as being obvious over the prior art.
Continue Reading Federal Circuit Provides Clarity on Use of Applicant Admitted Prior Art (“AAPA”) in IPRs
On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just released a set of FAQs addressing questions about the memo.
Continue Reading Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals
AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor patents. Previously, the International Trade Commission (“ITC”) had found certain Apple Watch products infringe two of the three patents.
Continue Reading You Snooze, You Lose: Federal Circuit Emphasized Once Again the Importance of Preserving Issues for Appellate Review
In CQV Co. Ltd. v. Merck Patent GmbH, the Federal Circuit addressed (1) the interaction of indemnification agreements with Article III standing for appeals of post-grant review decisions of the Patent Trial and Appeal Board; and (2) whether all evidence must be addressed by the Board when qualifying prior art.
Continue Reading Federal Circuit Touches on Appellate Standing and Prior Art Determinations in the Context of Post-Grant Review Proceedings
In Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. Mar. 13, 2025), the Federal Circuit upheld the Patent Trial and Appeal Board’s decision holding that U.S. Patent No. 9,803,176 (“the ’176 patent”) was not inherently anticipated by a prior art process, because the prior art process did not inevitably result in the claimed cell marker expression profile.
Continue Reading Federal Circuit Clarifies Anticipation Analysis for Product-By-Process Claims
This decision[1] emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B).
Continue Reading The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”