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Bond order doesn’t qualify for immediate appeal

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit reaffirmed strict limits on interlocutory review, finding that a bond order, even one imposing significant financial obligations, is not directly appealable. Micron Technology, Inc., et al. v. Longhorn IP LLC, Case No. 23-2007; Katana Silicon Technologies LLC v. Micron Technology, Inc., et al., Case No. 23-2095 (Fed. Cir. Dec. 18, 2025) (Lourie, Schall, Stoll, JJ.)

Idaho’s Bad Faith Assertions of Patent Infringement Act allows targets of bad faith patent assertions to seek equitable relief, damages, fees, and punitive damages. It also authorizes courts to require the party asserting patent infringement to post a bond equal to estimated litigation costs and potential recovery.

Micron, a semiconductor manufacturer headquartered in Boise, Idaho, faced infringement claims from Katana Silicon in the Western District of Texas based on three expired patents. Micron counterclaimed under the Idaho act, alleging bad faith. After transfer of the case to the District of Idaho, Idaho intervened to defend the act’s constitutionality. Micron also sued Longhorn IP (alleged to control Katana) in Idaho state court under the act, seeking a $15 million bond. Longhorn removed that case to federal court. Both Katana and Longhorn moved to dismiss on preemption grounds. Both motions to dismiss were denied, and the district court imposed an $8 million bond on Katana and Longhorn pursuant to the act’s bond provision. Katana and Longhorn directly appealed the bond order.

Since there was no final judgment, the threshold question was jurisdiction. Katana and Longhorn raised three theories under which the Federal Circuit had jurisdiction on the direct appeal.

First, Katana and Longhorn argued that jurisdiction existed under 28 U.S.C. § 1292, which provides appellate jurisdiction on interlocutory orders granting, continuing, modifying, refusing, or dissolving injunctions. Katana and Longhorn argued that the bond order was “injunctive in nature” and posed irreparable harm. The Federal Circuit disagreed, concluding that a bond is not an injunction and does not meet the criteria for interlocutory appeal. The Court found that Katana and Longhorn could seek modification or waiver in district court and that no serious hardship or inability to challenge later was shown.

Second, Katana and Longhorn argued that the Federal Circuit had jurisdiction under the collateral order doctrine, which is “a narrow exception whose reach is limited to trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.” To fall under this exception, an order must satisfy at least the following conditions:

  • Conclusively determine the disputed question.
  • Resolve an important issue completely separate from the merits of the action.
  • Be effectively unreviewable on appeal from a final judgment.

The Court concluded that, at a minimum, the second and third conditions were not met. The Court explained that the bond issue was intertwined with the ultimate merits question of the bad faith claims because the same factors that can demonstrate bad faith in the motion to dismiss analysis implicate whether to impose a bond. The Court also explained that nothing prevented Katana [...]

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Direct injection fuel dispute fizzles

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s authority to institute inter partes review (IPR) proceedings are largely insulated from appellate review under 35 U.S.C. § 314(d). Ethanol Boosting Systems, LLC, et al. v. Ford Motor Co., Case Nos. 2024-1381; -1382; -1383 (Fed. Cir. Dec. 23, 2025) (Chen, Clevenger, Hughes, JJ.)

Massachusetts Institute of Technology (MIT) owns three related patents directed to fuel management systems for spark-ignition engines, which it exclusively licensed to Ethanol Boosting Systems (EBS). The patents disclose systems using both port fuel injection and direct injection to suppress engine knock by injecting an anti-knock agent, with increasing use of direct injection at higher torque levels.

EBS sued Ford for patent infringement. During claim construction, EBS and Ford disputed the meaning of claim terms related to “direct injection” fuel. EBS proposed the plain and ordinary meaning and no constraints on the term. Ford proposed terms requiring a fuel that is different from fuel used in port injunction systems and contains an anti-knock agent other than gasoline. While claim construction was pending, Ford filed IPR petitions using EBS’s proposed claim construction.

While Ford’s IPR petitions were pending, the district court adopted Ford’s construction and entered summary judgment of noninfringement. EBS appealed, and the Federal Circuit vacated and remanded the district court’s decision. Before the Federal Circuit had decided the appeal, the Board denied institution on all three IPR petitions primarily because it, like the district court, construed the direct injection fuel terms to require fuel different from the fuel used in the port injector. After the Federal Circuit decision, the Board granted rehearing, instituted IPRs, and ultimately found the challenged claims unpatentable as obvious. EBS appealed the Board’s final written decisions.

Institution challenge barred under § 314(d)

EBS argued that the Board acted unlawfully by effectively “staying” its decision on Ford’s rehearing request for more than a year while awaiting the Federal Circuit’s ruling on the district court appeal, and that the resulting institution decisions should therefore be vacated.

The Federal Circuit rejected this argument, finding that it was, in substance, an impermissible challenge to the Board’s institution determinations. The Court explained that § 314(d) bars appellate review not only of institution decisions themselves, but also of challenges “closely related” to those determinations. Characterizing the Board’s delay as an ultra vires “stay” did not change the analysis, particularly since no statutory deadline governed the timing of rehearing decisions and no IPR had yet been instituted.

The Federal Circuit further noted that the narrow exceptions to § 314(d), such as colorable constitutional claims, did not apply because EBS failed to raise a viable due process or other constitutional argument.

Claim construction: District court rulings don’t control

EBS next argued that the Board was bound by the district court’s earlier claim construction (applied during the prior Federal Circuit appeal) requiring a non-gasoline anti-knock [...]

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Equivalents still requires all elements be met, injunctive relief still governed by eBay factors

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit issued a mixed ruling in a dispute over patents covering child car seat technology, explaining that infringement under the doctrine of equivalents requires an equivalent for each and every claim element, and that a grant of injunctive relief requires proof of all eBay factors. On the issue of willfulness, the panel majority held that the exclusion of exculpatory evidence was a reversable error. Wonderland Switzerland AG v. Evenflo Co., Inc., Case Nos. 23-2043; -2233; -2326 (Fed. Cir. Dec. 17, 2025) (Moore, Prost, JJ.) (Reyna, J., concurring in part and dissenting in part).

Wonderland owns two patents directed to convertible child car seats. Wonderland alleged that Evenflo’s four-in-one convertible seat models infringed its patents. A jury found infringement of one patent under the doctrine of equivalents and infringement of the other patent both literally and under the doctrine of equivalents. The district court entered judgment and permanently enjoined Evenflo from activities related to both patents. Evenflo appealed.

Evenflo challenged the finding of infringement under the doctrine of equivalents for the first patent, arguing that its accused seats lacked the claimed “locking mechanism for selectively detachably connecting” the seat back to the seat assembly. The Federal Circuit agreed, finding that no reasonable jury could find equivalence because the claim “plainly requires the seat back to include the components for selective detachability,” whereas Evenflo’s seats “simply include a stationary metal bar” and all locking components reside on the seat assembly. As a result, the Court concluded “there c[ould] be no equivalence as a matter of law.”

Evenflo also argued that the district court abused its discretion in permanently enjoining activities relating to both patents. Regarding the first patent, the Federal Circuit found that the district court abused its discretion in granting a permanent injunction because Wonderland expressly declined to request such relief. Wonderland argued the grant of a permanent injunction as to the first patent was harmless error because it had the same “practical effects” as the injunction for the second patent. The Court disagreed, explaining that the injunction could affect Evenflo’s release of other products, which may not necessarily infringe the second patent.

Regarding the second patent, the Federal Circuit concluded that the district court abused its discretion in granting a permanent injunction because it relied solely on speculative and conclusory evidence that Wonderland suffered, and would continue to suffer, irreparable harm or injury that could not be compensated with monetary damages. The Court explained that the district court failed to identify evidence that Wonderland’s partner lost sales or market share to Evenflo rather than other competitors, or that the partner’s reputation or product distinctiveness was harmed. The Court also noted that testimony that a lost car seat sale “naturally leads” to loss of other product sales was based on conjecture without supporting data. Finally, the Court found that statements that consumers “might think” technology problems existed if Evenflo’s product failed were deemed speculative and insufficient to establish irreparable harm.

Wonderland cross-appealed, asserting [...]

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Authentication approved: § 314(d) doesn’t bar review of IPR petition scope

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board inter partes review (IPR) decision, finding that:

  • § 314(d) does not bar review of an IPR petition’s scope.
  • Substantial evidence supported the Board’s findings that the prior art taught the disputed limitations.
  • The Board correctly distinguished similar but different claim elements.

International Business Machines Corp. v. Zillow Group, Inc., Case Nos. 24-1170; -1274 (Fed. Cir. Dec. 9, 2025) (Chen, Taranto, Stoll, JJ.)

IBM holds a patent related to systems and methods for single sign-on (SSO) operations, enabling users to create and access multiple accounts using a single set of login credentials. Rakuten petitioned for IPR, asserting an anticipation challenge under § 102 and three obviousness challenges under § 103. The Board instituted review and addressed three claim limitations central to the dispute.

The Board first addressed the “protected resources” limitation. It adopted IBM’s construction requiring URLs or URIs and ultimately found the anticipation challenge unmet, but not because Sunada prior art failed to disclose the limitation. Instead, Rakuten (the original IPR petitioner) expressly abandoned its § 102 anticipation ground at oral argument, and afterward the Board found that Rakuten had not carried its burden. However, the Board agreed that a prior art reference nonetheless satisfied the limitation because the Board concluded that a skilled artisan would understand Sunada’s express disclosure that “web applications” be identified by conventional URLs or URIs.

Next, the Board construed “identifier associated with the user” to mean information that uniquely identifies a user, adopting IBM’s preferred construction. The Board found that the prior art reference disclosed this limitation through its use of a “User ID.”

Finally, the Board determined that Rakuten failed to establish that the asserted prior art taught the limitation requiring the second system to send a request message to a first system “in response to a determination” during user account creation. The prior art disclosed sending such a request only to the user’s own computer (not to the first system) when additional user information was needed.

The Board held several challenged claims unpatentable and others not unpatentable based on the asserted prior art. IBM appealed regarding all the claims the Board found unpatentable, contending that the Board’s analysis of “protected resources” relied on a theory of patentability not raised in the reward company’s petition, and that the Board’s findings on “identifier associated with the user” lacked substantial evidence. Zillow cross-appealed with respect to all claims the Board held not unpatentable, arguing that the Board’s findings lacked substantial evidence.

The Federal Circuit affirmed the Board on both appeals. First, responding to Zillow’s reviewability challenge, the Court held that § 314(d) did not bar review of whether the Board stayed within the petition’s grounds. The Court explained that while institution decisions are unreviewable, courts routinely examine whether the final written decision relies on theories actually presented in the petition. Zillow argued that because IBM’s challenge was “closely tied” to the Board’s institution decision, § 314(d)’s bar on [...]

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Institution decisions off limits: Federal Circuit rejects mandamus petitions based on due process, “settled expectations”

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit denied mandamus relief to three petitioners after the United States Patent and Trademark Office (USPTO) denied inter partes review (IPR) institution. The Court explained that Congress insulated the Director’s discretion from judicial review by making IPR institution determinations final and nonappealable, and that 35 U.S.C. § 314(d) bars virtually all judicial oversight. In re Cambridge Industries USA Inc., Case No. 2026-101; In re Sandisk Technologies, Inc., Case No. 2025-152; In re HighLevel, Inc., Case No. 2025-148 (Fed. Cir. Dec. 9, 2025) (nonprecedential) (Prost, Chen Hughes, JJ.)

The Federal Circuit acknowledged that while “colorable constitutional claims” may present an exception to the no judicial review clause, no such claims were raised in these cases. The petitioners failed to identify the kind of property interests or retroactivity concerns that could support either a colorable due process claim or an alternative avenue for relief.

Settled expectations

The lead case, In re Cambridge Industries USA, addressed the USPTO’s use of the “settled expectations” factor as a basis for discretionary denial. The agency denied institution on two patents that had been in force for seven and nine years, respectively, concluding that the patent owner had developed “settled expectations” in those long-standing rights. The companion petition, In re Sandisk Tech., involved patents that had been in force for nine and 12 years, and the USPTO reached the same conclusion.

The Federal Circuit declined to disturb either decision. The Court held that the petitioners had not shown that the settled expectations factor exceeded the USPTO’s statutory authority or that the agency’s application of the factor was unreasonable. It also rejected the argument that the USPTO had effectively created a “maximum-patent-age cap” on institution. Emphasizing the narrow scope of mandamus review, the Court reiterated that it was not deciding whether the USPTO’s actions were correct or statutorily permissible, but only that the petitioners failed to establish a “clear and indisputable right” to relief in light of Congress’s limits on judicial review of institution decisions.

Efficiency

In HighLevel, a district court had already found the challenged patents ineligible under 35 U.S.C. § 101. The Patent Trial & Appeal Board nonetheless denied IPR institution, determining that instituting review would not be an efficient use of agency or party resources and that the “efficiency and integrity of the patent system” were best served by declining review. The USPTO denied Director review.

The Federal Circuit rejected HighLevel’s contention that this decision violated due process, holding that HighLevel’s “mere reliance on the PTO evaluating its petition without regard to efficiency concerns arising from parallel litigation” was insufficient to establish a colorable constitutional claim.



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Vague definitions deflate tire trade secret claims

by | Dec 18, 2025 | ,

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment as a matter of law (JMOL) that the plaintiff failed to prove misappropriation of five alleged trade secrets related to self-inflating tire (SIT) technology and separately rejected the plaintiff’s claim for correction of inventorship of defendant’s patent related to the alleged trade secrets. Coda Dev. S.R.O., et al. v. Goodyear Tire & Rubber Co., et al., Case No. 23-1880 (Fed. Cir. Dec. 8, 2025) (Lourie, Dyk, Cunningham, JJ.)

Coda sued Goodyear in the Northern District of Ohio, alleging that Goodyear misappropriated trade secrets disclosed during SIT-technology collaboration discussions and that Coda’s founder should be added as an inventor on Goodyear’s patent related to the same technology. A jury initially found for Coda on five trade secrets (TS 7, 11, 20, 23, and 24) and awarded more than $64 million in compensatory and punitive damages. The district court, however, granted Goodyear JMOL, holding that the asserted trade secrets were insufficiently definite, not secret, and/or never used or disclosed by Goodyear. It later denied Coda’s inventorship claim of a Goodyear patent related to the alleged trade secrets after a bench proceeding. Coda appealed.

Trade secret claims

TS 24 concerned the “optimal” pump location in a tire sidewall above the rim. The Federal Circuit found that Coda had already disclosed this placement in a 2007 PCT application and a 2008 Tire Technology article, both of which discussed pump placement in the sidewall. At trial, Coda confirmed that these publications described the same location. The Federal Circuit determined that because the information was public, it could not be a trade secret.

Coda’s attempt to narrow TS 24 post hoc by adding qualifiers such as “conventional tire sidewall” failed because those limitations did not appear in Coda’s interrogatory responses in compliance with the district court’s order to provide “a complete list of the trade secrets (with particularity).” The Federal Circuit rejected Coda’s attempt to belatedly introduce additional specificity into the trade secret based on trial testimony and attorney arguments.

The Federal Circuit similarly affirmed that TS 7, 11, and 20 (which described broad categories of SIT system components and functions) failed the definiteness requirement. Each trade secret identified a list of desired features but did not specify the underlying “design and development” knowledge Coda claimed to own. Without a concrete articulation of the claimed technical know-how, the Court found that the descriptions were too vague to distinguish trade secret information from general design concepts already known in the field.

TS 23 comprised a set of pump-pressure test results. At trial, Coda offered only a single 2009 email that mentioned one of the pressure values listed in TS 23. The Federal Circuit found that this partial overlap could not sustain a verdict of “use,” particularly when no evidence showed Goodyear had received or relied on the totality of the testing data. The Court also found that Coda’s arguments about Goodyear proceeding with its SIT project after the email failed to establish a [...]

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From genus to subgenus: When written description and enablement demand more

by | Dec 11, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court’s denial of a motion for judgment as a matter of law (JMOL), finding that the patent specification failed to provide an adequate written description to practice the full scope of the claimed invention. Seagen Inc. v. Daiichi Sankyo Co., Ltd., Case Nos. 2023-2424; 2024-1176 (Fed. Cir. Dec. 2, 2025) (Lourie, Reyna, Chen, JJ.)

In 2020, Seagen sued Daiichi for infringing its patent covering antibody-drug-conjugates (ADCs). The patent claims priority to a 2004 application that broadly describes ADCs. The application lists 83 possible amino acids and includes more than 47 million possible tetrapeptide combinations. A Texas jury sided with Seagen, finding that Daiichi willfully infringed at least one claim, and awarded more than $41 million in damages plus an 8% running royalty. The district court denied Daiichi’s post-trial motion for JMOL and entered final judgment. Daiichi appealed.

Daiichi argued that no reasonable jury could have found that the 2004 application provided an adequate written description that would enable a skilled artisan to make and use the full scope of the claimed treatment. The Federal Circuit agreed, finding that the 2004 application did not provide written description support for a narrow Gly/Phe-only tetrapeptide subgenus. The application disclosed an enormous genus (approximately 47 million potential tetrapeptides derived from 83 amino acids) without identifying or singling out any tetrapeptide composed exclusively of Gly and Phe. The Court found that the mere appearance of Gly and Phe somewhere within the large list of amino acids was insufficient. The Court determined that Seagen’s claimed 81-member subgenus was merely an infinitesimal fraction of the millions of encompassed species, and that nothing in the 2004 disclosure singled out or directed a skilled artisan toward the Gly/Phe-only species claimed in the patent. Testimony from the named inventors also confirmed that, as of the application’s priority date, they had never contemplated a treatment using only the 81 tetrapeptides later claimed in the patent.

The Federal Circuit also found that the patent did not enable a skilled artisan to make and use the full scope of the claimed ADCs without undue experimentation. The district court had construed “D is a drug moiety” to encompass any drug, and the claims required that the drug be intracellularly cleaved in a patient. Together, these elements defined an extraordinarily broad genus of ADCs: any drug moiety paired with the required intracellular cleavage.

The specification, however, did not identify any common structural features predictive of intracellular cleavage across all possible drug-linker-antibody combinations. Instead, the evidence showed that ADC behavior was highly unpredictable, and scientists had to conduct assays to determine whether a given ADC satisfied the functional limitation.

Under long-standing Federal Circuit precedent where a patent disclosure requires researchers to conduct the undue experimentation doctrine, it does not satisfy the written description requirement. Because skilled artisans would need to evaluate enormous numbers of ADC permutations to determine whether they achieved the claimed intracellular cleavage, the patent failed the enablement requirement.



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IPR estoppel doesn’t extend to ongoing ex parte reexamination

by | Dec 11, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a decision by the Patent Trial & Appeal Board, concluding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexamination proceedings and that the Board may retain jurisdiction over a patent even after its expiration. In re Gesture Tech. Partners, LLC, Case No. 25-1075 (Fed. Cir. Dec. 1, 2025) (Lourie, Bryson, Chen, JJ.)

Gesture Technology owns a patent covering methods and apparatus for rapid TV camera and computer-based sensing of objects and human input for applications such as handheld devices, automotive systems, and video games. Samsung requested ex parte reexamination, which the United States Patent & Trademark Office (USPTO) granted.

While the ex parte reexamination was pending, Unified Patents, an organization that includes Samsung as a member, filed two IPR petitions. After the Board issued a final written decisions on the IPRs, Gesture Technology petitioned to terminate the ex parte reexamination, asserting that Samsung was estopped under 35 U.S.C. §315(e)(1) from “maintain[ing] a proceeding” at the USPTO challenging the patent on grounds it could have raised in the IPRs. The USPTO denied the petition, concluding that the estoppel provision does not apply to continuing ex parte reexamination proceedings.

Gesture Technology appealed both IPR final written decisions where the Board invalidated all but two claims. In the ex parte reexamination, the examiner rejected the two remaining claims as anticipated by Liebermann, a patent directed to an electronic communication system designed for deaf individuals that enables real-time interaction using sign language and speech translation. The Board affirmed. Gesture Technology appealed.

Gesture Technology argued that:

  • Estoppel under 35 U.S.C. §315(e)(1) should bar the reexamination because Samsung had previously participated in an IPR.
  • The Board had no jurisdiction because the patent expired.
  • The Board erred in finding anticipation based on Liebermann.

The Federal Circuit rejected Gesture Technology’s estoppel argument, explaining that § 315(e)(1) applies to an IPR “petitioner” maintaining a proceeding before the USPTO. In contrast, under 35 U.S.C. § 305, the USPTO – not the requester – maintains an ex parte reexamination. Thus, estoppel does not bar ongoing ex parte reexamination proceedings.

Gesture Technology argued that Liebermann did not correlate information with a function of the apparatus because its sending function was always selected. The Federal Circuit disagreed, finding substantial evidence that Liebermann disclosed a transmitter/receiver device with a camera performing initial image processing and transmitting processed data. Liebermann’s description of reducing images to pertinent data and sending that data to a processing center supported the conclusion that its device correlated image information with a transmission function, satisfying the claim limitations.

Finally, the Federal Circuit concluded that the Board retains jurisdiction over ex parte reexaminations even after patent expiration. Patent owners maintain rights such as the ability to sue for past damages, creating a live case or controversy that an ex parte reexamination can resolve.

Practice note: Ex parte reexamination remains a viable tool for challengers even after an IPR concludes because estoppel [...]

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From ‘best’ to bust: Multiple methods to determine “optimal/best” render claims indefinite

by | Dec 4, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of invalidity and grant of summary judgment of noninfringement, concluding that even if excluded portions of expert testimony were considered, the judgments would remain proper. Akamai Technologies, Inc. v. MediaPointe, Inc., AMHC, Inc., Case No. 24-1571 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Cunningham, JJ.)

AMHC owns two patents that address systems and methods for efficiently routing streamed media content over the internet using an “intelligent distribution network” that centrally manages requests for streamed media from geographically dispersed users to mitigate bandwidth problems inherent in transmitting large volumes of data. Akamai sued AMHC and its subsidiary MediaPointe (collectively, MediaPointe) seeking a declaratory judgment of noninfringement for both patents. MediaPointe counterclaimed for infringement of both patents, after which Akamai counterclaimed for declaratory judgment of invalidity of all claims of both patents.

At the claim construction stage, the district court determined that claim limitations using “optimal/best” language were invalid for indefiniteness because the specification failed to provide a procedure or boundaries to determine what is “optimal/best.” For the remaining asserted claims, the district court granted summary judgment of noninfringement. In doing so, the district court:

  • Excluded as untimely presented key portions of MediaPointe’s technical expert’s testimony, without which MediaPointe could not reasonably establish infringement
  • Ruled that even if the testimony was considered, the record entitled Akamai to summary judgment of noninfringement.

MediaPointe appealed.

MediaPointe contended that the claims using “optimal/best” language were not indefinite, arguing that the requirement to use measurable performance data (specifically “trace-route results”) provided an objective standard. The Federal Circuit disagreed, finding that this requirement did not supply a reasonably clear and exclusive definition of “optimal/best.” The Court explained that the “trace-route results” requirement was not sufficiently clear because multiple methods could be used to determine compliance, and the patent offered no guidance on which measures to apply.

MediaPointe also challenged the summary judgment of noninfringement for the remaining claims, arguing that the district court applied an improperly narrow construction instead of the ordinary meaning of the disputed limitation. The Federal Circuit rejected this argument, finding that a skilled artisan would not have reasonably understood the claim language more broadly and that the district court’s construction was correct in light of the patent’s context. The Court concluded that because there was no evidence that Akamai’s system met this narrower limitation, even considering the excluded expert testimony, there was no triable issue of fact and no reasonable jury could find infringement.

The Federal Circuit therefore affirmed the district court’s judgment.



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USPTO introduces voluntary search disclosure declarations in Board proceedings

by | Dec 4, 2025 |

The Director of the US Patent and Trademark Office (USPTO) issued a memorandum announcing a new initiative aimed at improving examination quality and transparency in Patent Trial & Appeal Board proceedings.

Effective immediately, petitioners in inter partes review (IPR) and post-grant review (PGR) proceedings may submit a search disclosure declaration (SDD) that explains in detail:

  • Databases and repositories consulted
  • Search approach, search terms, filters, queries, and classification pathways used
  • Analytics or publicly accessible resources referenced
  • Time spent searching and reviewing results
  • Any other relevant methodology details

The submission is voluntary, and petitioners that do not provide an SDD will not be penalized. However, when deciding whether to institute a proceeding, the Board will view submission of an SDD as a favorable discretionary factor, especially if the SDD reveals new or underutilized search pathways relevant to USPTO practices. The SDD may also help demonstrate potential USPTO error during examination, according to the memorandum.

The SDD can be filed confidentially under 37 C.F.R. § 42.14, with a motion to seal and request for in camera review. Protective orders must allow the USPTO to use the information for internal training and analytics. Confidential SDDs will not be publicly disclosed except as required by law, and deposition testimony related to an SDD will generally not be permitted.

Practice note: While optional, submitting an SDD can strengthen an IPR or PGR petition by signaling transparency and contributing to improved USPTO practices. Consider incorporating this step into your Board strategy, especially when leveraging sophisticated search tools or methodologies that the USPTO does not typically use during examination.



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