Category: claim challenges
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Preexamination IV: Using AI to Pressure-Test Inventions for Patent-Worthiness
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in AI assisted patent analysis, AI assisted Patent Generation, Artificial Intelligence and Patents, Artificial Intelligence for Examination of Patent Applications, Artificial Intelligence for Patents, claim challenges, Patent generation to avoid validity challenges, Patent Portfolio Management, Preexamination, prior artSeries note. This is the fourth post in the Preexamination series, following Part I,Part II, and Part III. From valid to worth owning The first three installments used AI to pressure-test claims against the prior art so that what gets filed is more likely to survive examination and challenge. Validity is necessary. It is not…
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Preexamination: Seeing the Art Before the Office Does
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in AI assisted patent analysis, AI assisted Patent Generation, America Invents Act, Artificial Intelligence and Patents, Artificial Intelligence for Examination of Patent Applications, Artificial Intelligence for Patents, claim amendments, claim challenges, Examination Automation, inter partes review, IPR, Large Language Model (LLM), Machine Learning (ML), Patent generation to avoid validity challenges, Patent Portfolio Management, Post Grant Review, Preexamination, prior art, PTAB Patent Trials, reexamination generally, Synthetic ExaminationFor as long as people have recorded what they know, two capabilities have raced each other: the rate at which we generate information, and the ability to find and make sense of what we already have. Neither has held the lead for long. Every leap in one exposes the inadequacy of the other. The field…
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Federal Circuit Denies Mandamus in Three IPR Institution Challenges: Deference to PTAB Discretion
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in Amended Rulemaking, America Invents Act, claim challenges, Federal Circuit, Federal Circuit Review of PTAB Proceedings, Future of PTAB Trial Practice, IPR, Litigation, Mandamus Actions in the Federal Circuit, Post Grant Review, PTAB, PTAB Patent Trials, PTO Director Review of AIA Trials, PTO Sued Under the APANov. 6, 2025 In three nonprecedential orders issued today, the U.S. Court of Appeals for the Federal Circuit denied mandamus relief for petitioners challenging the Patent Trial and Appeal Board’s (PTAB) discretionary denials of inter partes review (IPR) petitions. These decisions—arising from parallel district court litigation and the recent rescission of interim guidance on IPR…
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Petitioners Target PTAB’s Discretionary Denials with Federal Circuit Mandamus Petitions
In a series of recent filings before the U.S. Court of Appeals for the Federal Circuit, petitioners including Motorola Solutions, Inc., SAP America, Inc., Google LLC, Samsung Electronics Co., Ltd., SanDisk Technologies, Inc., Western Digital Technologies, Inc., and HighLevel, Inc. are pressing for writs of mandamus to overturn PTAB denials of inter partes review (IPR)…
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Federal Circuit Weighs in on Exceptional Case Determinations in Realtime Adaptive Streaming v. Sling TV and Dish
A recent Federal Circuit decision provided some additional insight into exceptional case determinations in patent infringement disputes. In Realtime Adaptive Streaming v. Sling TV, the Federal Circuit reviewed an award of attorneys’ fees granted to DISH and related Sling entities (collectively, DISH) by the United States District Court for the District of Colorado. Realtime Adaptive…
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A Split Panel of the Federal Circuit Reverses PTAB Finding of Unpatentability Without Remand in DSS v. Apple
In DSS Technology Management v. Apple Inc., a split panel of the Federal Circuit reversed a finding of patentability by the Patent Trial and Appeal Board (PTAB or the Board), but did so without remanding the case back to the Board for further findings. In DSS, the Federal Circuit considered two inter partes review decisions finding…
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Complex Claim Construction Issues in Knowles Electronics v. Cirrus Logic
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A recent Federal Circuit case demonstrates the complexity of resolving difficult claim construction issues in multiple agency and court proceedings. In Knowles Electronics v. Cirrus Logic the Federal Circuit declined to apply its own prior claim interpretation of the same term of the same claims of the same patent. U.S. Patent No. 6,781,231 (“the ’231 patent”) entitled “Microelectromechanical System…
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Federal Circuit’s Aqua Products Decision Clarifies Burden on IPR Petitioner to Challenge Amended Claims
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in Adjudicative instead of examinatorial, Broadest Reasonable Interpretation standard, claim challenges, estoppel from administrative proceeding, Federal Circuit Review of PTAB Proceedings, Motion to Amend, preponderance of evidence, reexamination generally, Settlements in Post-Grant Proceedings, Termination of Post-Grant ProceedingsOn October 4, 2017, the Federal Circuit issued a lengthy decision in Aqua Products v. Matal, spanning five opinions and 148 pages, which addressed the proper allocation of the burden of proof when amended claims are offered during inter partes review proceedings (“IPRs”). Aqua Prods. v. Matal, 2017 U.S. App. LEXIS 19293. The case concerns U.S. Patent No. 8,273,183, relating to…
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Shire’s Granted Motion to Amend Offers Additional Insight Into PTAB Amendment Practice
When a patent undergoes review at the Patent Trial and Appeal Board (“PTAB”), the Patent Owner has an opportunity to file a motion to amend claims so that a substitute claim can be proposed for each claim sought to be amended. Stakeholders, and even some jurists, have been critical of the PTAB for denying the majority…
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PTAB Narrows Its Preliminary Claim Interpretation To Uphold Cellular Patent
In July, 2014 Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Ericsson”) petitioned for inter partes review of claims 1, 2, 8-12 and 18-22 of U.S. Patent No. 7,787,431 owned by Intellectual Ventures II LLC (“IV”). In February, 2015, the Board instituted trial on claims 1 and 2 based on obviousness grounds, but denied institution of obviousness…