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Analysis of USPTO post-issuance proceedings

System Art:  Goodbye IPR Estoppel, Hello Fintiv Denials

Photo of Lu Ling (US)Photo of Michael Pohl (US)Photo of Eagle Robinson (US)
By Lu Ling (US), Michael Pohl (US) & Eagle Robinson (US) on May 15, 2025

Last week, the Federal Circuit issued a decision in Ingenico Inc. v. IOENGINE, LLC resolving a longstanding district court split by holding that IPR estoppel does not extend to system art “in public use, on sale, or otherwise available to the public.”…

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A “known technique” only needs to be a suitable replacement to support a conclusion of obviousness

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By Michael Pohl (US) & Vlada Wendel (US) on March 21, 2023

A claim that recites a combination of prior art elements may be obvious when the combination merely involves the use of a “known technique” that “has been used to improve one device” to “improve similar devices in the same way.”…

Don’t Xerox conclusory assertions in the expert declaration

Photo of Michael Pohl (US)
By Michael Pohl (US) on February 21, 2023

Expert testimony can be critical to support or defend against invalidity challenges in AIA trials, but must be adequately explained to be effective.  In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Feb. 10, 2023), Director Vidal…

Federal Circuit confirms that disavowal of claim scope must be “clear and unmistakable”

By NRF Digital Team on March 13, 2019

Whether in the patent’s specification or prosecution history, the disavowal of claim scopemust be “clear and unmistakable.”…

USPTO Proposes to Narrow Claim Interpretation in AIA Patent-Validity Trials

Photo of Eagle Robinson (US)
By Eagle Robinson (US) on May 9, 2018

In a move that may make it harder to invalidate—but also potentially easier to limit the scope of—challenged patents, the US Patent and Trademark Office (USPTO) on May 8 proposed narrowing the interpretation of patent claims during AIA validity trials.…

More SAS: PTAB “May” Revoke Institution in Some Pending Trials

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By Eagle Robinson (US) on April 30, 2018

The Patent Trial and Appeal Board today hosted a “Chat with the Chief” webinar to elaborate on the practical effects of its April 26 memo implementing the Supreme Court’s decision in SAS Institute Inc. v. Iancu. Of particular note…

PTAB Feeling SASsy: Institutions to Include “All Challenges”

Photo of Tom Owens (US)Photo of Eagle Robinson (US)
By Tom Owens (US) & Eagle Robinson (US) on April 29, 2018

The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu will rapidly impact pending and future AIA trials. According to a guidance memo released by the Patent Trial and Appeal Board on April 26, 2018, future institution decisions “will…

All-or-Nothing: Supreme Court Requires Instituted IPRs to Address All Challenged Claims

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By Tom Owens (US) on April 25, 2018

The United States Supreme Court in SAS Institute struck down the Patent Trial and Appeal Board’s practice of instituting inter partes review (IPR) on only a subset of claims challenged in the petition. SAS Institute Inc. v Iancu, 584 …

USPTO Giveth and USPTO Taketh Away: Supreme Court Upholds Constitutionality of AIA Reviews

Photo of Eagle Robinson (US)
By Eagle Robinson (US) on April 24, 2018

In its long-awaited Oil States decision, the United States Supreme Court today held that the Constitution does not preclude the United States Patent and Trademark Office (USPTO) from reviewing the validity of issued US patents. Oil States Energy Servs., Inc. …

“Informative” Decisions Show How the PTAB Exercises Its Discretion to Deny Petitions Based on Previously-Considered Prior Art and Arguments

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By Tom Owens (US) on April 5, 2018

In the past several months, the PTAB has designated as “informative” five decisions in which the Board exercised its discretion to deny institution under 35 U.S.C. § 325(d).  That statute provides that the board may reject a petition if “the…

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Patent Challenges provides reports, updates, commentary and insight on new decisions and other happenings related to post-issuance proceedings (IPR, PGR and CBM) at the Patent Trial and Appeal Board of the USPTO. Contributors are drawn from our deep roster of IP lawyers with experience in patent litigation, patent prosecution and post-issuance proceedings.

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