The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell, LLC, the Court affirmed the Patent Trial and Appeal Board’s inter partes review final written decision in favor of the patent owner, Jadi Cell, LLC, upholding claims in U.S. Patent No. 9,803,176 (the “ ’176 Patent”) directed to stem cells derived from umbilical cord subepithelial layer (“SL”) tissue with specific cell marker expressions (“Claimed Cells”).

A recent Patent Trial and Appeal Board decision related to hybrid quantum computing paves the way for more quantum computing-related patents, and potential litigation.  

Quantum computing is an important and evolving form of computing that has yet to be truly realized. Classical computing is, fundamentally, governed by the ability to store information in a bit, a binary unit represented by a one or a zero. In contrast, quantum computing is governed by a quantum bit, or qubit, which can represent an infinite, continuous number of possible states. For example, while 2 bits can store four combinations (00, 01, 10, or 11), 2 qubits can store all four combinations simultaneously. Hybrid quantum-classical computing (“HQC”) involves using both quantum computing and classical computing together in a system for one to address the shortcomings of the other. At its core, both types of computing are well known and rely on mathematical concepts making patent claims on a HQC highly susceptible to patent ineligibility attacks.

Formerly a niche venue for trade-related matters, the International Trade Commission (“ITC”) has emerged as a battleground for many high stakes intellectual property disputes, particularly in the technology, life sciences, and consumer electronics industries. With the power to block infringing products from entering the U.S., the ITC has become an increasingly attractive option for patent holders seeking swift and decisive remedies. 

Expiring patents can be a catalyst for M&A in the life sciences industry as pharmaceutical and biotechnology companies seek to maintain revenue streams and competitive advantages. In this edition of Beyond the Deal, our lawyers assess the evolving landscape, share insights on the impacts of strategic deals and explain how…

Mirror Worlds Technologies, LLC (“Mirror Worlds”) sued Meta Platforms, Inc. (“Meta”)—formerly Facebook, Inc.—in the Southern District of New York for patent infringement. The lawsuit involved three patents related to storing, organizing, and presenting data in time-ordered streams. These patents purportedly introduced a unique method for automatically storing documents in chronological order with timestamps. Mirror Worlds accused several Facebook features, including the News Feed, Timeline, and Activity Log, of infringing these patents.

Patent eligibility under 35 U.S.C. § 101 remains one of the most hotly contested and unpredictable areas of U.S. patent law. In the years following the Supreme Court’s landmark decisions in Alice Corp. v. CLS Bank Int’l (2014) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012), lower courts, the USPTO, and the Federal Circuit have wrestled with the proper application of the two-step framework for determining whether an invention is directed to an abstract idea, law of nature, or natural phenomenon—and, if so, whether it includes an inventive concept sufficient to transform it into patent-eligible subject matter.

patent denial

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new memorandum that fundamentally changes how the PTAB will handle inter partes review and post grant review petitions

In today’s rapidly evolving business landscape, mergers and acquisitions (“M&A”) remain a common strategic priority for companies aiming to grow, innovate, or strengthen their market position. However, the complexity of these transactions necessitates meticulous preparation and due diligence. Patent due diligence is a critical component of the intellectual property (“IP”) due diligence process in M&A deals, particularly for tech centric businesses. Overlooking this step can lead to substantial legal and financial repercussions post-transaction.

For anyone following the evolving admissibility standards for expert opinions relating to patent damages, the EcoFactor v. Google case is one to watch. In December 2024, the Federal Circuit granted Google’s petition for rehearing en banc to address the effect of amended Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals as they relate to admissibility of damages expert testimony—particularly when a per-unit royalty rate is derived from three allegedly comparable lump-sum licenses.

On February 28, 2025, the U.S. Patent and Trademark Office announced that it was rescinding a 2022 memorandum that provided guidance regarding the application of the Apple v. Fintiv decision to the Patent Trial and Appeal Board’s discretion to deny patent challenges with pending parallel district court litigation. The PTO has referred parties back to precedent for guidance including Apple Inc. v. Fintiv, Inc. Rescinding the 2022 memorandum also has the effect of effectively removing the proposed rules related to discretionary denial that were under consideration as recently as last year.