In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes review (“IPR”) petition. We have discussed these changes and recent decisions in prior blogs. Now, the PTO is facing legal challenges stemming from these policy changes. In one pertinent example, SAP America, Inc. filed a Petition for Writ of Mandamus to the Federal Circuit resulting from the PTO’s discretionary denial of its IPR petition, challenging the PTO Acting Director’s authority to enforce these new policies.

On the heels of the U.S. Patent and Trademark Office Acting Director’s recent decision to deny institution of iRhythm Technologies’ inter partes review petition, the PTO has now issued additional decisions clarifying the role of parties’ “expectations” in IPR proceedings. Along with the Acting Director’s guidance regarding discretionary denials of institution, decisions on two recent petitions further illuminate the PTO’s view of which factors should be given weight in deciding whether to deny an IPR petition.

In a pivotal ruling for patent damages and standard-essential patent (SEP) litigation, the Federal Circuit vacated a $300 million award against Apple in a long-standing dispute with Optis Cellular Technology, LLC. See Optis Cellular Tech., LLC v. Apple Inc. (“Op.”). The Federal Circuit sided with Apple on multiple fronts—vacating the damages and infringement findings, reversing § 101 findings on the claims of one of Optis’s patents, and reversing a finding that another patent did not invoke 35 USC § 112 ¶6 (The patent at issue was issued pre-AIA so §112(f) is referred to as 112 ¶ 6 as in the original statute language). The Court also affirmed claim construction of certain terms and held the lower court abused its discretion under Federal Rules of Evidence 403 by admitting certain damages evidence and testimony from Optis.

The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC  provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s specification can evidence that the patentee intended for a term in the patent claims to have a different…

In April, the Federal Circuit issued a significant patent law ruling involving artificial intelligence. In Recentive Analytics, Inc. v. Fox Corp, the Court addressed a core question facing many AI-driven businesses: When are solutions applying machine learning to real-world problems inventive and patentable? The Federal Circuit affirmed the trial court’s dismissal of the underlying case at the pleading stage under § 101 and held that applying generic machine learning models to scheduling and programming tasks—without disclosing any technological advances to the underlying machine learning techniques—failed to meet the eligibility standards under 35 U.S.C. § 101.

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.  

On the heels of the recent reintroduction of the PERA and PREVAIL Acts of 2025, a bipartisan group of lawmakers in Congress has introduced the Leadership in Critical and Emerging Technologies (“CET”) Act. The goal of the Leadership in CET Act is to “encourage innovation by, and the leadership of, the United States with respect to critical or emerging technologies” – specifically, artificial intelligence, semiconductor design, and quantum information science.

Your Package Could Not Be Delivered – District of Delaware Strikes Electronic Storage Room Claims as Patent Ineligible

Judge Choe-Groves of the United States Court of International Trade granted Defendant’s Motion to Dismiss and ruled Plaintiff’s asserted electronic storage room patent invalid under § 101 of the Patent Act.

Luxer, a Delaware corporation and plaintiff in this patent infringement case, makes products related to controlling access to a package storage room. For example, the patent at issue describes systems and methods for controlling electronic locks of a storage room based on access rules and user credentials. The motivation behind these products is to offer a solution that allows a delivery carrier to drop off a package and a recipient to collect their package at any time and in a secure manner – no signature required. The Defendant, Package Concierge, Inc., offers very similar products.

Admissibility standards for patent damages experts has come under scrutiny. Previously, we highlighted the EcoFactor v. Google case regarding Google’s petition for rehearing en banc to address the admissibility of EcoFactor’s damages expert and the parties’ oral argument before the Court. On May 21, 2025, the Federal Circuit issued an 8-2 decision, ordering a new damages trial and overturned the $20 million verdict against Google. The Court found that the district court committed reversible error by allowing EcoFactor’s damages expert to testify at trial.

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.