The Federal Circuit’s recent decision last week in Inland Diamond Prods. Co. v. Cherry Optical Inc., offers an important reminder for patent litigators: a PTAB’s factual finding in an inter partes review (IPR) does not automatically bind a district court. The case underscores that issue preclusion has clear boundaries when different forums apply different standards of proof.
Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.
The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent owners and patent challengers navigating the PTAB’s approach to discretionary denials.
A New Dawn for Patent Owners? Breaking Down the PERA and PREVAIL Acts of 2025
In a move that could reshape the U.S. patent landscape, Congress has reintroduced two major pieces of legislation: the Patent Eligibility Restoration Act (PERA) of 2025 and the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act. Both bills purport to restore clarity, strength and global competitiveness to the U.S. patent system—longstanding priorities for patent owners across industries.
Here we break down what each bill proposes and what it could mean for innovators if passed in its current form.
Federal Circuit Affirms Stem Cell Product-by-Process Claims: Lessons in Claim Construction and Inherency from Restem LLV v. Jadi Cell LLC
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”).
Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers
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
Focus on Fintiv: Shift in Patent Office Guidance for Discretionary Denials of Patent Challenges
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.
Apple v. GTP: Reminders and Takeaways from the Federal Circuit’s Recent Precedential Opinion
A recent precedential decision by the Federal Circuit in Apple Inc v. Gesture Technology Partners, LLC, decided on March 4, 2025, has affirmed the Patent And Trial Appeal Board’s inter partes review (IPR) mixed ruling on appeal. The IPR relates to U.S. Patent No. 7,933,431 titled “Camera Based Sensing in Handheld, Mobile, Gaming, or Other Devices,” issued to Gesture Technology Partners, LLC (“GTP”). The Board’s final written decision had found all claims unpatentable, except claims 11 and 13. Apple appealed as to claims 11 and 13 and GTP cross-appealed as to the remaining claims. This blog post gives an overview of the recent decision and provides some reminders and takeaways for litigation and IPR counsel-alike.
PTAB Has Authority to Issue Decisions After Statutory Deadline
Recently, in Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc., the Federal Circuit held for the first time that the Patent Trial and Appeal Board (“the Board”) has the authority to issue a Final Written Decision even after the statutory deadline has passed.
Congress introduced post grant review (“PGR”) and
Duty of Candor Continues Before the PTAB or Does it?
In an unprecedented PTAB decision involving Spectrum Solutions LLC and Longhorn Vaccines & Diagnostics, the Board found all five challenged patents invalid and imposed sanction against patent owner Longhorn for failure to meet the duty of candor and fair dealing. The board determined that Longhorn selectively disclosed testing results to
Is an Appeal Time Well-Spent? For Patents, That Depends . . .
In Sawstop Holding LLC v. Vidal the Federal Circuit confirmed what many practitioners suspected— the Patent and Trademark Office will only award a patent term adjustment to offset a delay caused by appellate review of a patent prosecution if the appeal results in allowable claims ready for issuance.