Patent Law University

149 decisions · Patent law

Obviousness Decisions (35 U.S.C. § 103)

Under § 103, a claim is unpatentable if the differences between it and the prior art are such that the claimed invention as a whole would have been obvious, before the effective filing date, to a person having ordinary skill in the art.

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  1. Fed. Cir. · Oct. 1, 2026In re Satius Holding, Inc.The Federal Circuit dismissed the appeal as moot because, in a companion appeal decided the same day, it concluded that claim 1 of the ’385 patent is invalid. The court did not reach the merits of the PTAB’s obviousness rejection.
  2. Fed. Cir. · Sept. 30, 2026Wang v. Viking Drill & Tool, Inc.The Federal Circuit affirmed the Board’s finding that the earlier Wang ’808 application did not provide written-description support for the claimed “formed spirally” limitation, so Wang ’808 qualified as prior art. Because substantial…
  3. Fed. Cir. · Sept. 30, 2026In re WSOU Investments LLCThe Federal Circuit affirmed the Board's § 103 rejection, holding that the Board applied the same claim construction used in the earlier IPR and that substantial evidence supported the finding that Traversat suggested the disputed…
  4. Fed. Cir. · Sept. 25, 2026Zentian Ltd. v. Apple Inc.The Federal Circuit affirmed the Board’s construction of “feature vector” to include codewords/vector-quantized representative feature vectors because claim 1 covers quantities “extracted and/or derived” from a digital audio stream.…
  5. Fed. Cir. · Sept. 17, 2026In re Incept LLCThe Federal Circuit held that the Board applied an unreasonably broad construction of “flow barrier” under the broadest-reasonable-interpretation standard. Because that erroneous construction drove the Board’s conclusion that the only…
  6. 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…
  7. Fed. Cir. · Sept. 2, 2026Netlist, Inc. v. Micron Technology, Inc.The Federal Circuit affirmed the Board’s obviousness determinations as to all challenged claims. The court held that the Board stayed within the petition’s asserted Harris-FBDIMM combination and that substantial evidence supported the…
  8. Fed. Cir. · Sept. 2, 2026Vieth v. MOM Enterprises, LLCThe Federal Circuit affirmed the Board's obviousness determination for claims directed to delivering vitamin D by applying one drop of a vitamin D/MCT composition to an object for sucking or licking. The court upheld the Board's…
  9. Fed. Cir. · Sept. 2, 2026Netlist, Inc. v. Micron Technology, Inc.The Federal Circuit affirmed the Board’s obviousness determinations for all challenged claims. Substantial evidence supported the Board’s motivation-to-combine and reasonable-expectation findings, and the Board adequately explained its…
  10. Fed. Cir. · Sept. 2, 2026Netlist, Inc. v. Micron Technology, Inc.The Federal Circuit affirmed, holding that substantial evidence supported the Board's findings that Ellsberry taught enabling buffer data paths in accordance with a latency parameter and enabling data paths through the claimed buffer. The…
  11. Fed. Cir. · Aug. 31, 2026Apple Inc. v. SpaceTime3D, Inc.The Federal Circuit affirmed the Board across the board: claims 1-13 remained not proven unpatentable, and claims 14-18 remained unpatentable. The court upheld the Board's claim constructions, its refusal to consider Apple's reply-stage…
  12. Fed. Cir. · Aug. 31, 2026SpaceTime3D, Inc. v. Apple Inc.The Federal Circuit affirmed the Board’s obviousness determinations. The court rejected SpaceTime3D’s claim-construction arguments for the disputed ordering and replacement limitations and held that substantial evidence supported the…
  13. Fed. Cir. · Aug. 31, 2026Exelixis, Inc. v. MSN Laboratories Private Ltd.The Federal Circuit affirmed the finding that the asserted claims of the '439, '440, and '015 patents had adequate written description under § 112(a). The court dismissed as moot MSN's appeal as to claim 3 of the '349 patent and vacated…
  14. Fed. Cir. · Aug. 27, 2026Apple Inc. v. Smart Mobile Technologies LLCThe Federal Circuit affirmed the Board's implicit construction of "multiplexed signals" and its finding that Apple failed to prove the challenged multiplexing claims unpatentable. The court vacated and remanded the Board's obviousness…
  15. Fed. Cir. · Aug. 27, 2026Apple Inc. v. Smart Mobile Technologies LLCThe Federal Circuit affirmed the Board's construction of "multiplexing signals" as "combining multiple signal streams into one." Applying that construction, substantial evidence supported the Board's finding that Apple failed to prove the…
  16. Fed. Cir. · Aug. 26, 2026Zilkr Cloud Technologies, LLC v. Cisco Systems, Inc.The Federal Circuit held that the Board erred by construing the “request to provision” and “activate” limitations broadly enough to cover management of existing services; read in light of the specification, the claim requires adding a new…
  17. Fed. Cir. · Aug. 19, 202610x Genomics, Inc. v. Parse Biosciences, Inc.The Federal Circuit affirmed the Board’s obviousness determinations. Substantial evidence supported the Board’s findings on motivation to combine, use of ligation as an obvious design choice for flexibility, and disclosure of the…
  18. Fed. Cir. · Aug. 18, 2026Robert Bosch LLC v. Westport Fuel Systems Canada Inc.The Federal Circuit affirmed the Board’s finding that Bosch failed to prove Klügl disclosed the disputed limitation requiring the hydraulic fluid to act substantially as a solid with substantially constant thickness during activation.…
  19. Fed. Cir. · Aug. 14, 2026Nielsen Company (US), LLC v. TVision Insights, Inc.The Federal Circuit affirmed the Board's obviousness determination. Substantial evidence supported the Board's finding that Tian was reasonably pertinent analogous art and that the asserted combinations taught the challenged limitations…
  20. 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…
  21. Fed. Cir. · Aug. 10, 2026VL Collective IP, LLC v. Netflix, Inc.The Federal Circuit held that the claim phrase “response to the content status” does not require the response to be triggered by the terminal’s sending of content-status information. Because VideoLabs’ challenge to the Huston obviousness…
  22. 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…
  23. Fed. Cir. · July 31, 2026Pfizer Inc. v. Sanofi Vaccines US Inc.The Federal Circuit affirmed the Board's denial of Pfizer's motion to amend because substantial evidence supported the Board's finding that proposed substitute claims 48 and 49 would have been obvious. The court held that the lack of…
  24. Fed. Cir. · July 31, 2026RJ TECHNOLOGY LLC v. SAMSUNG ELECTRONICS CO., LTD.The Federal Circuit granted the motion to the extent it dismissed the appeal. The court ordered each party to bear its own costs.
  25. PTAB Director Review · July 29, 2026Biofrontera Inc., Biofrontera Bioscience GmbH, Biofrontera Pharma GmbH, and Biofrontera AG v. Sun Pharmaceutical Industries, Inc.The Director granted Patent Owner's request for review, vacated the Final Written Decision, and dismissed the Petition. The ITC had already decided, on the same claims, prior art and obviousness grounds, that the claims were not shown…
  26. Fed. Cir. · July 24, 2026Amsted Rail Company, Inc. v. SquiresThe Federal Circuit held that the Board did not err in construing claim 1 to impose no required order between sensing/measuring accelerations and filtering them. Substantial evidence supported the Board's obviousness findings for both the…
  27. Fed. Cir. · July 21, 2026Keysight Technologies, Inc. v. Centripetal Networks, LLCThe Federal Circuit affirmed, holding that the Board did not abuse its discretion in finding that Keysight's petition failed to present particularized obviousness arguments for claims 6, 14, 22, 30, and 33. A header and chart listing…
  28. Fed. Cir. · July 21, 2026APPLE INC. v. ZENTIAN LTD.The Federal Circuit held that the Board legally erred by requiring the prior art to accommodate a large-vocabulary acoustic model when the claims required only an acoustic model and covered smaller abbreviated models. The Board also erred…
  29. Fed. Cir. · July 21, 2026Slingshot Printing LLC v. Canon U.S.A., Inc.The Federal Circuit affirmed the Board’s obviousness determination. The Board did not need to construe “thick film layer,” Slingshot forfeited a separate teaching-away argument, and substantial evidence supported motivation to combine and…
  30. Fed. Cir. · July 21, 2026Dental Monitoring SAS v. Align Technology, Inc.The Federal Circuit affirmed the Board’s obviousness determinations. Substantial evidence supported the Board’s findings on the combined prior-art teachings, no teaching away, public accessibility of the Maninis reference, and the…
  31. Fed. Cir. · July 17, 2026Schindler v. SquiresThe Federal Circuit affirmed the district court’s judgment without opinion under Federal Circuit Rule 36. The judgment provides no merits reasoning or identified patent-law issue.
  32. Fed. Cir. · July 17, 2026Woodway USA, Inc. v. LifeCore Fitness, LLCThe Federal Circuit affirmed the Board’s obviousness determination. The court rejected Woodway’s effort to recast the Board’s prior-art fact findings as an implicit claim construction and found substantial evidence supporting the Board’s…
  33. ITC · July 17, 2026Certain Mobile Electronic Devices; Inv. No. 337-TA-1432 (Violation)The ALJ found a § 337 violation only as to U.S. Patent No. 11,490,004, concluding that Samsung infringed claims 1 and 10, Maxell proved technical and economic domestic industry, and Samsung failed to prove invalidity. No violation was…
  34. Fed. Cir. · July 16, 2026Slingshot Printing LLC v. Canon U.S.A., Inc.The Federal Circuit affirmed the Board’s construction of “physically separated proximal to the bondpad” as measured relative to the end of the trace, not the heater arrays. Substantial evidence supported the Board’s obviousness findings,…
  35. Fed. Cir. · July 16, 2026Slingshot Printing LLC v. Canon U.S.A., Inc.The Federal Circuit affirmed the Board's obviousness determinations. Substantial evidence supported the Board's findings on motivation to combine and the claimed centrally disposed temperature sensor, and Slingshot's teaching-away…
  36. PTAB Director Review · July 15, 2026Cisco Systems, Inc. v. Lionra Technologies Ltd.The Director granted Patent Owner's request, reversed the Final Written Decision finding claims 1-3, 5-10, 12-15, and 17-21 unpatentable as obvious, and held that Petitioner failed to prove unpatentability. The Board abused its discretion…
  37. Fed. Cir. · July 15, 2026ASSA ABLOY AB v. CPC Patent Technologies Pty Ltd.The Federal Circuit affirmed the Board's construction of "biometric signal" as "a physical or behavioral biometric attribute" and upheld the Board's finding that the asserted prior-art combination did not teach the enrollment-process…
  38. Fed. Cir. · July 13, 2026Google LLC v. Parus Holdings, Inc.The Federal Circuit held that the Board erred by analyzing Burrows in isolation rather than the asserted obviousness combinations, adopted a construction of “unexpected response” without giving Google adequate APA notice and opportunity…
  39. Fed. Cir. · July 10, 2026Intellectual Pixels Limited v. Sony Interactive Entertainment LLCThe Federal Circuit affirmed, holding that the Board did not violate the prior mandate by addressing the 'compressing' limitation on remand because that issue was not decided in the first Board judgment or the first appeal. The court also…
  40. Fed. Cir. · June 26, 2026POWER2B, INC. v. SAMSUNG ELECTRONICS CO., LTD.The Federal Circuit dismissed the appeal under Federal Rule of Appellate Procedure 42(b) based on the parties’ agreement. Each side will bear its own costs.
  41. 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…
  42. 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…
  43. 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…
  44. Fed. Cir. · June 24, 2026Sansone v. United States Patent and Trademark OfficeThe Federal Circuit affirmed dismissal because the USPTO’s motion to dismiss was timely and the complaints failed to state a plausible claim under either the district court’s construction or the applicant’s asserted ultra vires theory.…
  45. 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…
  46. 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…
  47. 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…
  48. Fed. Cir. · June 18, 2026IRONBURG INVENTIONS LTD. v. VALVE CORPORATIONThe Federal Circuit held that the district court lacked sufficient evidence to estop Valve from asserting the Kotkin ground because a classification search returning an unreviewably large number of references did not establish reasonable…
  49. Fed. Cir. · June 15, 2026Medmix Switzerland AG v. SquiresThe Federal Circuit affirmed the Board's construction of “at least two ramps” as not requiring an inclined-plane shape. Substantial evidence supported the Board's motivation-to-combine findings, including its finding that…
  50. Fed. Cir. · June 9, 2026In re Zhengxu HeThe Federal Circuit held that substantial evidence supported the Board's finding of a motivation to combine Buehler with He '660. The court also rejected the applicant's APA challenge because the Board addressed the substance of his…
  51. 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…
  52. 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.
  53. Fed. Cir. · June 8, 2026Zentian Ltd. v. Apple Inc.The Federal Circuit affirmed the PTAB without opinion under Federal Circuit Rule 36. The judgment provides no substantive reasoning or issue-specific holding.
  54. Fed. Cir. · June 8, 2026KNOA PHARMA LLC v. ACCORD HEALTHCARE, INC.The Federal Circuit affirmed, holding that the district court did not clearly err in finding motivation to use a coating pan and a reasonable expectation of success in modifying the Bartholomäus prior art. The court also rejected…
  55. Fed. Cir. · June 5, 2026Hafeman v. Google LLCThe Federal Circuit dismissed the patent owner's Sotera-stipulation challenge as barred by 35 U.S.C. § 314(d) because it sought termination for reasons tied to institution. The court otherwise affirmed the Board's obviousness…
  56. 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…
  57. Fed. Cir. · June 4, 2026Life Spine, Inc. v. Globus Medical, Inc.The Federal Circuit held that the claim term "complementary with one another" is broad enough to cover ramped portions with mirrored angles and is not limited to ramped portions that complete one another. Because Globus did not dispute…
  58. Fed. Cir. · May 28, 2026GO1 PTY, LTD. v. OPENSESAME, INC.The Federal Circuit held that substantial evidence did not support the Board's finding that Go1's expert testimony on motivation to modify was conclusory. The court vacated and remanded for the Board to reconsider obviousness consistent…
  59. 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…
  60. Fed. Cir. · May 22, 2026Pictometry International Corporation v. Roofr Inc.The Federal Circuit affirmed the PTAB's finding that all claims of the '538 patent are unpatentable for obviousness, holding that substantial evidence supported the Board's conclusion that Bailey's 'predominant slope' discloses the…
  61. 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…
  62. Fed. Cir. · May 22, 2026Pictometry International Corporation v. Roofr Inc.The Federal Circuit affirmed the Board's finding that all claims of the '800 patent are unpatentable for obviousness, holding that substantial evidence supported the Board's determination that a skilled artisan would have known to…
  63. Fed. Cir. · May 21, 2026Otsuka Pharmaceutical Co., Ltd. v. Lupin Ltd.The Federal Circuit affirmed non-infringement of both patents because Otsuka failed to prove by a preponderance that Lupin's DMF process reaches practical completion of the reduction reaction before more than one molar equivalent of…
  64. Fed. Cir. · May 21, 2026SameSurf, Inc. v. Intuit Inc.The Federal Circuit affirmed the Board's construction of 'web browsing interaction data' as 'data related to web browsing interactions'—broad enough to encompass partially filled webpages—and therefore affirmed the Board's finding that…
  65. 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…
  66. Fed. Cir. · May 15, 2026mCom IP, LLC v. City National Bank of FloridaThe Federal Circuit affirmed the Rule 12(b)(6) dismissal with prejudice because mCom showed no error in the district court's obviousness-based invalidity ruling on claim 17. It reversed the § 285 fee award and the § 1927 sanction against…
  67. Fed. Cir. · May 14, 2026Spero v. Volkswagen Group of America, Inc.The Federal Circuit dismissed Spero's appeals from six IPR final written decisions as moot. It had affirmed the Board's unpatentability determinations for the appealed claims of the '503 patent in a companion appeal, Spero v.…
  68. 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…
  69. Fed. Cir. · May 13, 2026Universal Electronics, Inc. v. Roku, Inc.The Federal Circuit agreed with the Board's construction of "the provisioned codeset record comprising protocol and formatting information." The construction does not require all protocol and formatting information to be stored in the…
  70. Fed. Cir. · May 11, 2026Metrom Rail, LLC v. Siemens Mobility, Inc.The court affirmed the Board's obviousness determinations for all claims of the '227 patent and claims 1–16 of the '131 patent. On the cross-appeal, it reversed the Board's finding that claims 17–20 of the '131 patent were not…
  71. 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…
  72. Fed. Cir. · Apr. 30, 2026Wildseed Mobile, LLC v. Google LLCThe Federal Circuit affirmed the Board's construction of 'taken … from a message' to include information generated or derived from message text—not merely verbatim extraction—and affirmed the Board's finding that all challenged claims are…
  73. Fed. Cir. · Apr. 29, 2026Federal Express Corporation v. Qualcomm IncorporatedThe court affirmed the Board's constructions of "short range communication path" (any path shorter than the claimed "longer range" path, including WLAN) and "unable to" (not limited to permanent physical incapacity), and so affirmed the…
  74. Fed. Cir. · Apr. 29, 2026Federal Express Corporation v. Qualcomm IncorporatedThe Federal Circuit held that "programming change" in claim 7 of the '033 patent requires a change in function, so the Board's broader construction was wrong. Because substantial evidence did not support the Board's alternative finding…
  75. Fed. Cir. · Apr. 29, 2026Federal Express Corporation v. Qualcomm IncorporatedThe court held that FedEx's challenges based on 35 U.S.C. § 312(a)(2) (real-party-in-interest), including the Board's refusal to decide the issue and its denial of the motion to terminate, are unreviewable under § 314(d). It vacated the…
  76. 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…
  77. Fed. Cir. · Apr. 23, 2026Centripetal Networks, LLC v. Keysight Technologies, Inc.The Federal Circuit affirmed the Board's obviousness findings as to claims 1–3, 5–13, and 15–20, holding that substantial evidence supported the Board's claim construction of 'packet flow entry' and its finding that Sourcefire (alone or…
  78. Fed. Cir. · Apr. 23, 2026Slingshot Printing LLC v. Canon U.S.A., Inc.The Federal Circuit affirmed the Board's finding that claims 1–5 and 8 of the '341 patent are unpatentable as obvious over Torgerson and Bruce, holding that the Board's findings on the polysilicon conductor limitation, motivation to…
  79. PTAB guidance · July 31, 2025Enforcement and Non-waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes ReviewsThe USPTO will enforce, and no longer waive, 37 C.F.R. § 42.104(b)(4), which requires an IPR petition to specify where each claim element is found in the prior art patents or printed publications relied upon. As a result, applicant…
  80. 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…
  81. PTAB · Aug. 24, 2022Xerox Corp. v. Bytemark, Inc.When a petitioner's expert declaration merely repeats verbatim the petition's conclusory assertion and cites no additional supporting evidence and gives no technical reasoning, the Board may give the declaration little weight and may not…
  82. PTAB guidance · June 9, 2022Updated applicant admitted prior art (AAPA) memorandumSuperseded on July 31, 2025 by Enforcement and Non-waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (July 31, 2025). The memorandum sets out the USPTO's reading of 35 U.S.C. § 311(b) on…
  83. 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…
  84. PTAB · Feb. 13, 2020Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbHWhen a petition relies on the same or substantially the same prior art or arguments previously presented to the Office in a proceeding pertaining to the challenged patent, the Board applies a two-part § 325(d) framework: (1) whether the…
  85. 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"…
  86. PTAB · Jan. 24, 2020Lectrosonics, Inc. v. Zaxcom, Inc.When a patent owner offers objective indicia of nonobviousness in an IPR, the Board first asks whether a presumption of nexus applies, which requires a showing that the evidence is tied to a specific product that embodies the claimed…
  87. 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…
  88. PTAB · Oct. 31, 2019PUMA North America, Inc. v. NIKE, Inc.Informative decision only: persuasive authority, not binding precedent. When a petition asserts the same prior art and the same rejection the examiner applied during prosecution, with substantially the same rationale, and the petitioner…
  89. 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…
  90. PTAB · Aug. 5, 2019Hulu, LLC v. Sound View Innovations, LLCInformative decision only: persuasive authority, not binding precedent. When a petitioner's obviousness rationale for adding a reference's feature (here, a main memory database) rests on a stated premise (tight timing requirements) that…
  91. PTAB · Apr. 1, 2019Ex parte HannunInformative decision only: persuasive authority, not binding precedent. Applying the 2019 Revised Patent Subject Matter Eligibility Guidance, when a claim recites a specific implementation of speech transcription (normalizing, jitter set,…
  92. PTAB · Feb. 25, 2019Lectrosonics, Inc. v. Zaxcom, Inc.When a patent owner files a motion to amend in an inter partes review, a request to substitute claims is ordinarily treated as contingent, the burden of persuasion on unpatentability of substitute claims ordinarily lies with the…
  93. PTAB · Feb. 20, 2019Ex Parte SpanglerInformative decision only: persuasive authority, not binding precedent. When an examiner finds that particular relative sizes and locations of claimed features solve no stated problem and would perform equally well in the combined prior…
  94. PTAB · Jan. 24, 2019Deeper, UAB v. Vexilar, Inc.Informative decision only: persuasive authority, not binding precedent. When a petition under 35 U.S.C. § 314(a) shows a reasonable likelihood of prevailing on only a small part of what it challenges (here two of twenty-three claims on…
  95. PTAB · Jan. 18, 2019Amazon.com, Inc. v. Uniloc Luxembourg S.A.When a patent owner files a motion to amend under 35 U.S.C. § 316(d) in an inter partes review, the Board may consider, and a petitioner may raise in opposition, grounds of unpatentability other than § 102 and § 103, such as § 101,…
  96. PTAB · Oct. 16, 2018Johns Manville Corp. v. Knauf Insulation, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner under § 103 shows only that references are analogous art, in the same field, or merely compatible, and offers conclusory expert support, the Board…
  97. 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…
  98. PTAB · Dec. 15, 2017Becton, Dickinson & Co. v. B. Braun Melsungen AGWhen the same or substantially the same prior art or arguments previously were presented to the Office, the Board may exercise discretion under 35 U.S.C. § 325(d) ("the Director may take into account whether . . . the same or…
  99. PTAB · Aug. 25, 2017Ex parte McAwardWhen examining a pending application, the Office makes a prima facie case of indefiniteness under § 112(b) (pre-AIA § 112, second paragraph) by applying the broadest reasonable interpretation and explaining how the metes and bounds of the…
  100. PTAB · Aug. 22, 2017Cultec, Inc. v. Stormtech LLCInformative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments in an IPR petition were previously presented to the Office, including through a third-party submission…
  101. PTAB · Dec. 15, 2016Kayak Software Corp. v. Int’l Bus. Mach. Corp.Informative decision only: persuasive authority, not binding precedent. When the same or substantially the same prior art or arguments were previously presented to the Office during a long, exhaustive prosecution, and the petitioner shows…
  102. PTAB · Dec. 14, 2016Unified Patents Inc. v. BermanInformative decision only: persuasive authority, not binding precedent. When a petition relies on the same or substantially the same prior art or arguments previously presented to the Office (35 U.S.C. § 325(d)), including art considered…
  103. PTAB · Oct. 6, 2016Seabery North America Inc. v. Lincoln Global, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner supports a reference's status as a printed publication with a declaration from the author's thesis advisor testifying to library deposit, public…
  104. PTAB · Apr. 28, 2016Ex parte SchulhauserWhen a method claim recites steps that need to be performed only if a condition precedent is met, the broadest reasonable interpretation covers a method in which the condition is not met, so the Board need not require prior art evidence…
  105. 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…
  106. PTAB · Mar. 21, 2014Ex parte ThompsonInformative decision only: persuasive authority, not binding precedent. When an applicant submits objective evidence of nonobviousness (here, long-felt but unsolved need and failure of others), the Examiner must consider it together with…
  107. PTAB · Oct. 30, 2013Ex parte Whirlpool Corp.Informative decision only: persuasive authority, not binding precedent. When objective evidence of nonobviousness (industry praise, commercial success, long-felt need, copying) is tied to a commercial embodiment that practices the claim,…
  108. PTAB · May 24, 2013Ex parte TalkowskiInformative decision only: persuasive authority, not binding precedent. In deciding whether a reference is analogous art under § 103, the Board applies the two-step In re Wood test (Step 1: is the reference within the field of the…
  109. PTAB · Oct. 23, 2012Ex Parte MaedaInformative decision only: persuasive authority, not binding precedent. Examiners are discouraged from relying on "design choice" because it is generally a mere conclusion, not a substitute for obviousness reasoning based on factual…
  110. PTAB · May 21, 2012Ex parte BoerInformative decision only: persuasive authority, not binding precedent. When an applicant appeals a rejection and challenges the examiner's determination that a 37 C.F.R. § 1.131 declaration of prior invention is insufficient, the Board…
  111. 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…
  112. 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…
  113. 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…
  114. 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…
  115. PTAB · June 2, 2010Ex Parte QuistWhen an appellant argues on appeal that the examiner erred in finding obviousness based in part on proffered secondary-considerations evidence, the Board must review the obviousness conclusion anew on the totality of the record, weighing…
  116. PTAB · Mar. 18, 2010Ex parte Baxter Int’l, Inc . 2009-006493 (March 18, 2010) [considering expert testimony]Informative decision only: persuasive authority, not binding precedent. When an appellant offers expert or witness testimony to show skepticism or lack of a reasonable expectation of success, the Board may give it little weight if the…
  117. 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…
  118. PTAB · Jan. 26, 2010Ex parte FletcherInformative decision only: persuasive authority, not binding precedent. When an examiner takes Official Notice in an Office Action and the applicant's next response contains no traversal within the proper time frame, the Board may treat…
  119. PTAB · July 22, 2009Ex parte MoonInformative decision only: persuasive authority, not binding precedent. When an examiner construes a claim limitation in a way that is inconsistent with the specification (here, drawings showing a heat dissipater not coupled to an entire…
  120. 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,…
  121. PTAB · May 6, 2009Ex parte JanakiramanInformative decision only: persuasive authority, not binding precedent. When the Board affirms an independent claim as obvious solely because an unchallenged dependent claim was affirmed as obvious (and the examiner never rejected the…
  122. PTAB · Nov. 3, 2008Ex parte JelláWhen an ex parte applicant offers secondary-considerations evidence to rebut a prima facie case of obviousness, the applicant bears the burden of establishing a nexus between the claimed invention and that evidence, and the evidence must…
  123. 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…
  124. PTAB · May 29, 2008Ex parte McCannInformative decision only: persuasive authority, not binding precedent. When an ex parte applicant relies on commercial success or long-felt need to rebut a prima facie case of obviousness under Graham, the applicant bears the burden of…
  125. PTAB · Apr. 29, 2008Ex parte POD-NERS, L.L.C .Informative decision only: persuasive authority, not binding precedent. When a claim to a plant variety or its seed relies on a seed deposit and the record (the patent's own statements, declarations and counsel's admissions) shows the…
  126. PTAB · Mar. 31, 2008Ex parte BobrowskiInformative decision only: persuasive authority, not binding precedent. When claim scope is so unclear, even in light of the specification, that applying prior art would require "speculation as to the meaning of the terms employed and…
  127. PTAB · Mar. 31, 2008Ex parte FuWhen the prior art discloses a genus containing a broad but finite number of known options that predictably solve the same problem and includes the claimed species, the Board may find the species prima facie obvious under an "obvious to…
  128. PTAB · Jan. 28, 2008Ex parte NehlsWhen a claim to a computer-based system differs from the prior art system only in the content of the sequence data stored in its data storage means, and that data does not functionally change how the computer performs the search (the…
  129. PTAB · Aug. 22, 2007Ex parte DartInformative decision only: persuasive authority, not binding precedent. When prior art references address the same problem as the claimed invention (here, reclosure of a drink opening using a strap-connected plug, a mechanical closure…
  130. PTAB · July 27, 2007Ex parte McBreartyInformative decision only: persuasive authority, not binding precedent. When the prior art identifies a design need or problem (here, Web latency) and a finite number of identified, predictable solutions, the Board may conclude that…
  131. PTAB · July 25, 2007Ex parte RighiInformative decision only: persuasive authority, not binding precedent. When an obviousness rejection rests on combining familiar elements that are unaltered and perform the same function, the Board may affirm on less than all of the…
  132. PTAB · July 3, 2007Ex parte CatanWhen a claimed structure is a known prior art structure altered by the mere substitution of one known element for another known element performing the same function (here, bioauthentication in place of a PIN or password), the Board may…
  133. 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…
  134. PTAB · May 31, 2007Ex parte KubinWhen the prior art supplies a known problem (isolating a particular cDNA), a limited number of conventional methodologies for solving it, and a reasonable expectation that at least one will succeed, the Board may treat the claimed product…
  135. 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…
  136. PTAB · Jan. 30, 2007Ex parte JudInformative decision only: persuasive authority, not binding precedent. When the Board reviews an obviousness rejection under 35 U.S.C. 103(a), the Graham skill-level inquiry need not be made in any prescribed format or expressly labeled,…
  137. PTAB · Apr. 6, 2006Ex parte WrightInformative decision only: persuasive authority, not binding precedent. When an applicant offers secondary-considerations evidence (commercial success, copying, long-felt need) against a prima facie case of obviousness, the Board…
  138. 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…
  139. 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…
  140. PTAB · June 30, 2005Ex parte CurryInformative decision only: persuasive authority, not binding precedent. When a claimed method, computer or storage medium differs from the prior art only in the content of the data (here "wellness-related" data) or a label (here a…
  141. PTAB · Sept. 16, 2003Stiller v. HeidInformative decision only: persuasive authority, not binding precedent. When a party moves under 37 CFR § 1.633(b) for judgment of no interference-in-fact, the movant (both parties, if the motion is joint, and even if unopposed) bears the…
  142. 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…
  143. 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…
  144. PTAB · Oct. 19, 2001Noelle v. LedermanInformative decision only: persuasive authority, not binding precedent. The question of no interference-in-fact is a one-way distinctiveness test, so a movant prevails by showing either that its claims are not anticipated or rendered…
  145. 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…
  146. 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,…
  147. 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…
  148. PTAB · Nov. 10, 1999Housey v. BermanWhen deciding whether an applicant had, before the one-year critical date, a claim to "the same or substantially the same subject matter" as a patent claim under 35 U.S.C. § 135(b), the Board must not apply the obviousness standard of 35…
  149. 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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