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70 decisions · Patent law

Anticipation and Prior Art Decisions (35 U.S.C. § 102)

Section 102 defines what counts as prior art. A claim is anticipated, and unpatentable, when a single prior-art reference discloses every element of the claim, arranged as the claim requires.

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  1. Fed. Cir. · Sept. 30, 2026In re Medical Components, Inc.The Federal Circuit denied mandamus. MedComp did not show a clear and indisputable right to relief based on an alleged conflict between the Utah court's post-remand ruling and the mandate in a different AngioDynamics appeal.
  2. Fed. Cir. · Sept. 21, 2026In re GomezThe Federal Circuit granted the joint motion to remand after the parties stated that the PTAB relied on a reference that was not prior art in rejecting certain application claims. The order did not address the merits beyond remanding for…
  3. Fed. Cir. · Sept. 14, 2026NCS Multistage Inc. v. TCO Group ASThe Federal Circuit affirmed the contributory-infringement judgment, holding that TCO forfeited its appellate challenges by not preserving them in post-trial briefing and could not relitigate a claim construction it had sought below. The…
  4. Fed. Cir. · Sept. 14, 2026NCS Multistage Inc. v. Nine Energy Service, Inc.The Federal Circuit held that the district court misconstrued both “internal diameter” and “casing string,” and that TCO’s August 2012 sale of the TDP-PO tool to Apache and Apache’s use were prior art as a matter of law. The court vacated…
  5. PTAB Director Review · Sept. 9, 2026Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. Maxell, Ltd.The Director granted Patent Owner's requests for Director Review and reversed the Final Written Decisions as to claim 15 of the '241 patent and claim 21 of the '590 patent. Agreeing with the panel dissent, the Director found that…
  6. Fed. Cir. · Aug. 10, 2026Dental Monitoring SAS v. Align Technology, Inc.The Federal Circuit held that AIA § 102(d)(2) requires substantive entitlement to priority, including § 112(a) written-description support, before a reference patent or published application can use an earlier provisional filing date as…
  7. Fed. Cir. · Aug. 7, 2026In re WAG Acquisition, LLCThe Federal Circuit affirmed the Board’s finding that Hill anticipated claims 1 and 4. Substantial evidence supported the Board’s findings on the claimed transmission requests, serial-number tracking in the player buffer, and receipt at a…
  8. Fed. Cir. · Aug. 6, 2026Ravin Crossbows, LLC v. SquiresThe Federal Circuit affirmed the Board's construction of "mounted to" as "connected to, either directly or indirectly." Because Ravin did not separately challenge anticipation under that construction, the court affirmed the Board's § 102…
  9. Fed. Cir. · Aug. 5, 2026Nike, Inc. v. lululemon athletica canada inc.The Federal Circuit affirmed the PTAB’s final written decision that all challenged claims were unpatentable, including anticipation by Amano and obviousness over Amano combined with Gorman or Flach. The court rejected Nike’s…
  10. Fed. Cir. · July 30, 2026G+ Communications, LLC v. Samsung Electronics Co., Ltd.The Federal Circuit affirmed, holding that the Board did not violate the APA by relying on Samsung’s oral-hearing statements because they elaborated on an issue already raised, not a new unpatentability theory. The court also held that…
  11. Fed. Cir. · July 27, 2026Board of Regents of the University of Texas System v. Boston Scientific Corp.The Federal Circuit held that Boston Scientific was entitled to JMOL that asserted claims 1, 11, 17, and 26 were anticipated by the Song prior-art patent. The court also held that Boston Scientific was entitled to JMOL of noninfringement…
  12. Fed. Cir. · July 22, 2026Shenzhen Jisu Technology Co., Ltd. v. The Entities and Individuals Identified in Annex AThe Federal Circuit affirmed, holding that collateral estoppel did not bar the district court from revisiting its earlier non-final reasoning in the same ongoing case. The court also held that the district court did not abuse its…
  13. Fed. Cir. · July 9, 2026In re Magnolia Medical Technologies, Inc.The Federal Circuit affirmed because substantial evidence supported the Board's finding that Brannon disclosed the disputed fluid-reservoir and bypass limitations. The claim did not require the reservoir limitation to be satisfied at the…
  14. Fed. Cir. · July 2, 2026TrackTime, LLC v. Amazon.com Services LLCThe Federal Circuit vacated the indefiniteness ruling on the '978 patent because the district court did not adequately analyze, under intervening Dyfan precedent, whether the full “executable program code” limitations recited sufficient…
  15. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of Apple’s IPR petition against the ’098 patent in the high-speed memory-module technology area under § 314(a) discretionary authority. The denial turned on Apple’s unexplained inconsistent…
  16. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution under § 314(a) discretion for Apple’s IPR against WeCrevention’s memory-related Patent No. 10,998,017, finding Apple’s PTAB claim-construction position on “input/output unit” irreconcilable with its…
  17. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of Apple’s IPR petitions against WeCrevention’s high-speed memory chip module patents under discretionary § 314(a), applying Revvo and Infineon rather than reaching the prior-art merits. The denial rested…
  18. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of IPR2026-00243 challenging WeCrevention’s U.S. Patent No. 12,154,652 in the computer-memory module technology area under discretionary authority, effectively § 314(a), based on Apple’s inconsistent…
  19. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution under § 314(a) discretion in Apple’s IPRs against WeCrevention’s high-speed memory module patents, including IPR2026-00240 challenging U.S. Patent No. 9,201,834. The core reason was claim-construction…
  20. Fed. Cir. · June 23, 2026Enanta Pharmaceuticals, Inc. v. Pfizer Inc.The Federal Circuit affirmed, holding that the provisional application's disclosure of a —NHC(O)—C2-C12-alkyl substituent did not provide written description support for the later-claimed —NHC(O)—C1-alkyl subject matter. Because the…
  21. Fed. Cir. · June 9, 2026Google LLC v. Sonos, Inc.The Federal Circuit held that substantial evidence did not support the Board's finding that Rosenberger disclosed exchanging coordination messages while a device remained in a low-power mode. The court reversed and remanded, declining to…
  22. Fed. Cir. · June 9, 2026Centripetal Networks, LLC v. Keysight Technologies, Inc.The Federal Circuit affirmed the PTAB. The Rule 36 judgment provides no reasoning or issue-specific holdings.
  23. Fed. Cir. · June 4, 2026Arendi S.A.R.L. v. Oath Holdings Inc.The Federal Circuit affirmed, holding that the asserted claims of all four patents, including the '843 patent on an alternative ground, are patent-ineligible under § 101. The claims were directed to the abstract idea of identifying…
  24. PTAB Director Review · May 26, 2026PacifiCorp et al. v. MES, Inc.The Board denied institution under 35 U.S.C. § 314(a) in IPR2025-00425 challenging claims of U.S. Patent No. 10,589,225, which concerns mercury-emissions control technology for power-plant flue gas. The denial was not based on evaluation…
  25. ITC · May 22, 2026Certain Nanolaminate Alloy Coated Metal Parts and Products Containing the Same; Inv. No. 337-TA-1431 (Violation)The ALJ found no violation of Section 337, concluding that Modumetal failed to prove by a preponderance of evidence that Respondents' ToughShield® Plus coated products infringe Asserted Claims 1, 2, 3, 5, and 7 of the '419 patent or…
  26. PTAB Director Review · May 20, 2026Berkshire Hathaway Energy Company et al. v. MES, Inc.The Board denied institution under 35 U.S.C. § 314(a) for IPR2025-00423, a second-ranked parallel petition challenging claims 1–4 and 6–29 of the ’430 patent in chemical/process technology (TC 1700). The denial was not based on prior-art…
  27. PTAB Director Review · May 14, 2026Magnolia Medical Technologies, Inc. v. Kurin, Inc.The Director denied institution of IPR2026-00097 (Magnolia Medical Technologies v. Kurin, Inc., U.S. Patent 12,138,052, medical device technology in Tech Center 3700) on discretionary grounds under § 314(a), concluding that the totality…
  28. PTAB Director Review · May 13, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director denied institution of IPR2026-00173 (and companion cases IPR2026-00171 and IPR2026-00172) under 35 U.S.C. § 314(a) because Ford Motor Company maintained claim construction positions in parallel district court litigation that…
  29. Fed. Cir. · May 6, 2026DK Crown Holdings Inc. v. AG 18, LLCThe Federal Circuit affirmed, holding that the Board did not abuse its discretion in refusing to consider DK's reply-footnote request to apply Ground 3 (Bryson + Schlottmann) against claim 18 when the petition never asserted Schlottmann…
  30. Fed. Cir. · Apr. 24, 2026TQ Delta, LLC v. CommScope Holding Company, Inc.The Federal Circuit affirmed the Eastern District of Texas on all three issues. Substantial evidence supported the jury's finding that claim 14 of the '008 patent was not infringed, the "flag signal" construction for the '835 patent was…
  31. PTAB · Mar. 10, 2023Penumbra, Inc. v. RapidPulse, Inc.When a reference patent document is applied as prior art under AIA 35 U.S.C. § 102(a)(2), the Board need not evaluate whether any claim of the reference is actually entitled to priority or benefit under 35 U.S.C. §§ 119 or 120, so the…
  32. PTAB guidance · Aug. 18, 2020Applicant admitted prior art (AAPA) memorandumSuperseded on June 9, 2022 by Updated applicant admitted prior art (AAPA) memorandum (June 9, 2022). The memorandum sets the USPTO's binding interpretation of 35 U.S.C. § 311(b) for statements of the applicant (AAPA) in the challenged…
  33. PTAB · Jan. 31, 2020Ex parte Grillo-LópezIn ex parte examination, where the examiner shows that a reference was made sufficiently accessible to interested persons ordinarily skilled in the art, the Board may find a prima facie case that the reference is a "printed publication"…
  34. PTAB · Dec. 20, 2019Hulu, LLC v. Sound View Innovations, LLCWhen a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b), the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly…
  35. PTAB · Sept. 6, 2019In-Depth Geophysical, Inc. v. ConocoPhillips Company (§ I.E)Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a prior art "printed publication" under 35 U.S.C. §§ 102 and 311(b) and offers only a vague website date and…
  36. PTAB · June 5, 2018Sandoz Inc. v. AbbVie Biotechnology Ltd. (§ III.C.1)Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a web-posted reference as a "printed publication" under 35 U.S.C. § 311(b), it need not prove public accessibility by a preponderance at…
  37. PTAB · July 27, 2017Hospira, Inc. v. Genentech, IncInformative decision only: persuasive authority, not binding precedent. When the examiner during prosecution expressly decided that the challenged claims were entitled to an earlier priority date and withdrew a rejection over a reference…
  38. PTAB · May 23, 2016Argentum Pharmaceuticals LLC v. Research Corporation Technologies, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b) and § 102, the Board requires a "threshold showing" of public…
  39. PTAB · Mar. 24, 2015AOL Inc. v. Coho Licensing LLCInformative decision only: persuasive authority, not binding precedent. When a party asks for rehearing by an expanded panel in an inter partes review, the Board will not treat the request as proper, because panel designation is within…
  40. PTAB · Aug. 29, 2014Cisco Sys., Inc. v. C-Cation Techs., LLCInformative decision only: persuasive authority, not binding precedent. When a petition uses footnotes to cite large portions of an expert declaration without sufficient explanation, cites claim charts in the declaration from its own…
  41. PTAB · July 8, 2014Prism Pharma Co. v. Choongwae Pharma Corp.Informative decision only: persuasive authority, not binding precedent. When the same prior art and substantially the same arguments that a petitioner relies on were previously presented to the Office during prosecution, including by a…
  42. PTAB · Feb. 28, 2012Ex parte SmithInformative decision only: persuasive authority, not binding precedent. When a reference lists a long set of possible additives so that some picking and choosing is needed to arrive at the claimed specific compound, the reference does not…
  43. PTAB · Dec. 9, 2011Ex parte Vegas Amusements, Inc.Informative decision only: persuasive authority, not binding precedent. In ex parte reexamination, where claims use the open-ended transition "comprising" and recite "a" processor device, the Board gives "a" its usual meaning of "one or…
  44. PTAB · May 16, 2011Ex parte Bayer Cropscience, LPInformative decision only: persuasive authority, not binding precedent. When a method claim's body recites the same compound and the same steps as a prior art reference, and the preamble states only a purpose (here, "attracting insects")…
  45. PTAB · Oct. 21, 2010Ex parte Antor Media Corp .Informative decision only: persuasive authority, not binding precedent. When a patent owner in ex parte reexamination argues that an anticipatory prior art reference is non-enabling, the Board will assess enablement under the Wands…
  46. PTAB · June 22, 2010Ex parte MonclaWhen the Board reverses all of the examiner's prior-art rejections under 35 U.S.C. § 102(b) and § 103(a) and the only remaining rejection on appeal is a provisional non-statutory obviousness-type double patenting rejection over claims of…
  47. PTAB · Feb. 26, 2010Ex parte FryeWhen an appellant contests only particular findings or issues in an examiner's rejection, the Board reviews those contested findings anew for error in light of all the evidence and argument on that issue, but filing an appeal does not…
  48. PTAB · Aug. 6, 2009Ex parte GivensInformative decision only: persuasive authority, not binding precedent. When an applicant's specification does not expressly define a claim term but describes the term as a specific type of processing known in the art and sets out the…
  49. PTAB · June 5, 2009Amgen, Inc. v. Human Genome Sciences, Inc.Informative decision only: persuasive authority, not binding precedent. When an interference party's utility-based unpatentability motion has been granted and the Board has entered judgment, the Board may, in its case-specific discretion,…
  50. PTAB · Feb. 6, 2009Barany v. McGallInformative decision only: persuasive authority, not binding precedent. When all of a senior-party patentee's claims have been held unpatentable but the junior-party applicant has not yet proven it invented the count's subject matter…
  51. PTAB · July 23, 2008Ex parte WhalenWhen the prior art teaches away from the claimed solution, as where every reference favors low viscosity and the claims require a much higher viscosity, an examiner cannot establish obviousness merely by asserting that a known composition…
  52. PTAB · June 25, 2007Ex parte SmithWhen an examiner shows that the claimed structure's other limitations are expressly disclosed in a single reference and the specification indicates a claimed capability (here, thickness rendering an insert passable through a copier or…
  53. PTAB · Apr. 30, 2007Ex parte MayInformative decision only: persuasive authority, not binding precedent. When a U.S. patent application publication under 35 U.S.C. § 122(b) claims § 120 benefit of a parent and the relied-upon subject matter is described in the parent in…
  54. PTAB · Mar. 27, 2007Ex parte BatteuxInformative decision only: persuasive authority, not binding precedent. When a prior art reference discloses administering the claimed compound to a patient within a broadly construed method claim, the Board may find inherent anticipation…
  55. PTAB · Oct. 20, 2005Ex parte AshkenaziInformative decision only: persuasive authority, not binding precedent. When a patent qualifies as prior art under 35 U.S.C. § 102(e) and the applicant offers no evidence that the reference's own claims lack § 112 support, the reference…
  56. PTAB · Aug. 19, 2005Ex parte MathiasInformative decision only: persuasive authority, not binding precedent. When a claim differs from the prior art only in nonfunctional descriptive material (here, the particular broadcasted television image, a sporting event rather than…
  57. PTAB · May 12, 2003Genise v. DesautelsInformative decision only: persuasive authority, not binding precedent. When a moving party in an interference relies on a prior art reference or on a general incorporation by reference, the Board will not search the record or credit…
  58. PTAB · Apr. 10, 2003Herman v. BarnesInformative decision only: persuasive authority, not binding precedent. When a party in an interference over inventorship of a patent (the party who claims to be sole inventor) seeks judgment that the patent names the wrong inventors, it…
  59. PTAB · Feb. 3, 2003DeBoer v. GordonInformative decision only: persuasive authority, not binding precedent. When a movant (here, the parties jointly) shows that its involved claims would have been neither anticipated nor obvious over the other party's involved claims, so…
  60. PTAB · Oct. 18, 2002Kundu v. RagunathanInformative decision only: persuasive authority, not binding precedent. When a junior party under a Rule 617 show-cause order has a prima facie earlier actual reduction to practice but filed about thirty-five months later and shortly…
  61. PTAB · June 11, 2002University of Washington v. Eli Lilly & Co.Informative decision only: persuasive authority, not binding precedent. When deciding a motion for no interference-in-fact, the Board compares the parties' corresponding claims and, applying 37 CFR § 1.601(n), treats each party's claimed…
  62. PTAB · Mar. 11, 2002Kopf-Sill v. YagerInformative decision only: persuasive authority, not binding precedent. When a party seeks to belatedly file preliminary motions asserting unpatentability over prior art that the opponent already asserted against the movant's own claims,…
  63. PTAB · Jan. 4, 2002Gregory v. TsuiInformative decision only: persuasive authority, not binding precedent. When a party attacks an opponent's accorded benefit in an interference, a best-mode defect in the benefit application does not defeat its status as a constructive…
  64. PTAB · Jan. 1, 2002Sauer, Inc. v. Kanzaki Kokyukoki Mfg.Informative decision only: persuasive authority, not binding precedent. When a party in an interference moves under 37 CFR § 1.634 to correct inventorship as provided by § 1.48, it bears the burden under 37 CFR § 1.637(a) of proving by a…
  65. PTAB · Jan. 1, 2002Spalding v. HartsellInformative decision only: persuasive authority, not binding precedent. In an interference, a movant asserting that a document is a "printed publication" under 35 U.S.C. § 102 must itself allege specific facts, tied to particular…
  66. PTAB · Oct. 16, 2001Tseng v. Doroodian-ShojaInformative decision only: persuasive authority, not binding precedent. When a party moves for no interference-in-fact, it bears the burden of showing patentable distinctness in either direction: either that none of its claims…
  67. PTAB · Dec. 8, 2000LeVeen v. EdwardsWhen a party files a preliminary motion for judgment under 37 CFR § 1.633(a) relying on a § 102(a) or § 102(e) reference and the opponent alleges in its preliminary statement a date of invention prior to the reference's prior art date,…
  68. PTAB · Dec. 8, 2000LeVeen v. EdwardsWhen a party's interference preliminary motion for judgment under 37 CFR § 1.633(a) fails to follow the procedures in the Notice Declaring Interference (no incorporation of arguments by reference, facts set out in the motion,…
  69. PTAB · Nov. 16, 1999Winter v. FujitaWhen an interference-in-fact issue is raised by a preliminary motion under 37 CFR § 1.633(b), the Board must apply a two-way patentability analysis. Each party's claimed invention is presumed prior art to the other, and the claims are the…
  70. PTAB · Feb. 18, 1998Bamberger v. CheruvuInformative decision only: persuasive authority, not binding precedent. When an applicant in an interference asserts that a patent claim is unpatentable, the applicant bears the burden of proving its case by a preponderance of the…

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