IP UPDATE
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Spooky silence: USPTO Director summarily denies 13 IPR petitions

by | Nov 6, 2025 |

On October 31, 2025, the Director of the United States Patent and Trademark Office (USPTO) issued a notice denying institution of inter partes review (IPR) in 13 separate proceedings. The notice listed only the docket numbers of the affected IPRs and offered no substantive explanation for the denials, stating simply: “Pursuant to 35 U.S.C. § 314(a), institution of inter partes review is denied in the [listed] proceedings.” The summary denial follows the Director’s October 17, 2025, memorandum, which stated that the authority to determine whether to institute trial for IPR and post-grant review (PGR) proceedings rests solely with the USPTO Director.

Practice note: The October 17 memorandum signaled a shift in procedural control and reflected a broader policy approach to discretionary denials. While the October 31 notice provides limited insight into the basis for denial, it underscores the importance of understanding the USPTO’s evolving stance on institution discretion. Practitioners and petitioners alike should monitor future developments closely, as they may impact strategic considerations for filing and defending IPRs.



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Stocks, recusal, and copycats: ‘No problem’ on APJ conflict

by | Nov 6, 2025 |

The US Court of Appeals for the Federal Circuit found that an administrative patent judge’s (APJ) recusal in an inter partes review (IPR) based on ownership of stock in one of the defendant’s corporations in an amount below the statutory monetary threshold was not erroneous but remanded the case for further consideration of the copying evidence. Centripetal Networks, LLC v. Palo Alto Networks, Inc., Case No. 23-2027 (Fed. Cir. Oct. 22, 2025) (Moore, Hughes, Cunningham, JJ.)

Palo Alto Networks petitioned for IPR of Centripetal’s patent. The assigned three-member Patent Trial & Appeal Board panel instituted an IPR proceeding on the petition. Cisco sought joinder to the then-pending petition. Centripetal requested rehearing of the institution decision by either the Precedential Opinion Panel or the Board panel. The Precedential Opinion Panel denied the request.

In September 2022, Centripetal learned that a member of the Board panel owned stock in Cisco. However, Centripetal did not move for recusal until December 30, 2022, when it sought recusal of the entire panel and vacatur of the institution decision.

In January 2023, the Board panel denied Centripetal’s rehearing request and granted Cisco’s joinder motion. Nevertheless, two of the three members of the panel withdrew to narrow the issues before the Board. The reconstituted panel then denied Centripetal’s motion for vacatur and held that the recusal motion was untimely, because Centripetal had been aware of the potential conflict since September 2022.

In May 2023, the Board found certain claims of Centripetal’s patent to be unpatentable as obvious. Centripetal appealed to the Federal Circuit, arguing that the Board’s decision should be vacated because the allegedly conflicted APJ recused himself only after institution and because the Board failed to address Centripetal’s copying arguments.

The Federal Circuit determined that it had jurisdiction to hear the appeal, noting that the case turned on the interpretation of ethics rules and was not the first instance in which the Court reviewed a conflict-of-interest challenge involving an institution decision. The Court concluded that the Board did not abuse its discretion in determining that Centripetal’s recusal motion was untimely, as Centripetal had been aware of the potential conflict for three months before its filing.

The Federal Circuit also addressed the substance of the recusal motion and explained that the APJ’s stock holding in Cisco was less than the statutory $15,000 threshold at all times. Although Centripetal argued that different statutory provisions applied to APJs, the Court concluded that those provisions did not govern a federal employee’s personal financial holdings. Under the applicable statute, which requires recusal only when an employee owns more than $15,000 in a party, the Court found that the APJ was not required to recuse himself.

The Federal Circuit further found that Centripetal’s due process rights were not violated. The Court explained that ethics rules for Article III judges do not apply to administrative proceedings before APJs. The Court further noted that a recent (USPTO) memorandum directing the Board to avoid empaneling judges with any stock ownership in a party was not [...]

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Reframing the claim: Plain and ordinary meaning falls to lexicography

by | Nov 6, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s construction of a claim, finding that the plain and ordinary meaning of a disputed term was redefined by the patentee under principles of lexicography and use of intrinsic claim construction evidence. Aortic Innovations LLC v. Edwards Lifesciences Corp., et al., Case No. 24-1145 (Fed. Cir. Oct. 27, 2025) (Prost, Reyna, Chen, JJ.)

Aortic sued Edwards Lifesciences for infringing its patents directed toward a transcatheter valve with a frame component. During claim construction, the district court determined that Aortic had acted as its own lexicographer and redefined the term “outer frame” to be “a self-expanding frame,” based on the interchangeable use of the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame” when referring to the same structure in two embodiments. Based on this construction, the parties stipulated to noninfringement of the asserted patents since Edwards’ accused valve did not have a self-expanding frame. Aortic appealed the judgment of noninfringement, challenging the district court’s construction of the claim term “outer frame.” Aortic appealed.

Aortic contended that “outer frame” should be given its plain and ordinary meaning of “positioned outside” and argued that the specification did not support limiting “outer” to require “self-expanding.” The Federal Circuit disagreed, relying on both lexicographical and specification-based grounds for its construction.

In applying principles of lexicography, the Federal Circuit reasoned that if a person of ordinary skill in the art (POSITA) would understand that two claim terms were used consistently and interchangeably throughout a patent specification, those terms may be considered definitionally equivalent. Referring to several examples, the Court observed that Aortic used “outer frame,” “self-expanding frame,” and “self-expanding outer frame” interchangeably throughout the specification when describing the frame, and concluded that “outer frame” was properly construed to require “self-expanding.”

With regard to using the specification as intrinsic claim construction evidence, the Federal Circuit reasoned that the specification consistently described the “outer frame” as a “self-expanding frame” and did not restrict that feature to a particular embodiment. From this, the Court concluded that the absence of any express exception or explanation would lead a POSITA to understand that the valve’s construction required a self-expanding outer frame in all embodiments.

Aortic alternatively argued that Edwards should be judicially estopped from arguing for a construction of “outer frame” that departed from its plain and ordinary meaning. Aortic asserted that Edwards had previously argued before the Patent Trial & Appeal Board that “outer frame” should be defined using its plain and ordinary meaning, but later adopted a contrary position in front of the district court, contending that the term referred only to a “self-expanding frame.” The Federal Circuit disagreed and explained that Aortic failed to sufficiently develop its judicial estoppel argument before the district court. Absent any exceptional circumstances, the Court concluded that Aortic had forfeited the argument.

Finding Aortic’s arguments unpersuasive, the Federal Circuit affirmed the district court’s judgment of noninfringement as to the asserted patents, upholding the district court’s construction of the disputed claim [...]

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Boss move: Disclaimer that doesn’t work can still work as a disclaimer

by | Oct 30, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s judgment of noninfringement and no invalidity for indefiniteness, concluding that the court correctly construed the claims and properly determined that the patents’ specifications and prosecution histories would enable a person of ordinary skill in the art (POSA) to ascertain the scope of the claims with reasonable certainty. Barrette Outdoor Living, Inc. v. Fortress Iron, LP, Fortress Fence Products LLC, Case Nos. 24-1231; -1359 (Fed. Cir. Oct. 17, 2025) (Moore, Linn, Cunningham, JJ.)

Barrette sued Fortress for infringing its patents directed to a fencing assembly featuring pivoting, sliding connectors that connect pickets to rails. During claim construction, the district court determined that the terms “boss,” “projection,” and “nub” should be given the same meaning and that these “boss” terms described fastener-less and integral structures, distinguishing them from prior art. The district court also held that the terms “sliding” and “causes” were not indefinite because a POSA would understand their scope.

Following the Markman hearing, Barrette stipulated that it could not prove infringement under the court’s construction of the “boss” terms because the accused products used non-integral fasteners. Fortress stipulated, under the same construction, that it could not establish invalidity for indefiniteness. Barrette appealed, and Fortress cross-appealed.

Barrette first argued that the district court erred in finding that the specification disclaimed bosses with fasteners by disparaging prior art assemblies that used them. According to Barrette, the specification did not criticize the use of fasteners but merely distinguished the prior art designs. Fortress, however, argued that the specification repeatedly criticized assemblies employing fasteners, describing prior art systems that used fasteners to join the rails as time consuming to install. In contrast, the patented invention attributes its quick installation advantage to the use of fastener-less, integral bosses.

The Federal Circuit agreed with Barrette that the specification did not clearly and unmistakably disclaim bosses that use fasteners. The Court explained that while a patent may describe multiple advantages over the prior art, not every embodiment must incorporate each of those advantages. Accordingly, claims should not be construed to require every advancement disclosed in the specification. The Court further rejected Fortress’ argument that the claimed “boss” must always achieve the benefit of quick installation. Although the asserted patents describe ease of installation as an advantage of using bosses, that benefit does not limit the term’s structural scope. A “boss,” the Court held, is not restricted to fastener-less configurations. Accordingly, the Federal Circuit determined that the district court erred in limiting the claims to fastener-less bosses.

Barrette next argued that the district court erred by concluding that the prosecution history disclaimed non-integral bosses. The Federal Circuit rejected this argument and agreed with the district court that Barrette had clearly disclaimed non-integral boss structures during prosecution. The Federal Circuit stated that Barrette clearly distinguished prior art from the “claimed integral boss” in prosecution and expressly clarified the scope of its claims.

Barrette argued that its subsequent communications with the patent office rendered any purported disclaimer [...]

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Ain’t worried about local rules: Scope of sound recording protection is narrow

by | Oct 30, 2025 |

Addressing for the first time what evidence is required to prove infringement of a sound recording copyright, the US Court of Appeals for the Seventh Circuit affirmed a district court’s decision to grant summary judgment to the defendant, finding that the plaintiff’s copyright registration of his work as a sound recording required proof of actual sampling to establish infringement. Richardson v. Kharbouch, Case No. 24-1119 (7th Cir. Oct. 16, 2025) (Brennan, Jackson-Akiwumi, Pryor, JJ.)

In 2012, then-16-year-old Eddie Richardson created a hip-hop beat titled “*Hood* Pushin Weight” (HPW). Months later, while listening to the hit song “Ain’t Worried About Nothin” (AWAN) by Karim Kharbouch, who is better known by his stage name French Montana, Richardson believed that he recognized his own HPW beat. The next day, Richardson registered a sound recording copyright with the US Copyright Office. Richardson did not obtain a copyright registration for his musical composition. After Richardson’s attempts to negotiate with French Montana and his representatives failed, Richardson filed a copyright infringement lawsuit.

The district court conducted two rounds of summary judgment briefing. In both rounds, neither party complied with a local rule that required each side to respond to the opposing party’s statement of material facts. The court, in its discretion, declined to deem the unopposed facts admitted. After French Montana’s reply brief in the first round included a “passing comment” on the nature of Richardson’s copyright, raising a potentially dispositive issue, the district court ordered supplemental briefing.

In the second round of briefing, the district court determined that because Richardson had registered his copyright as a sound recording rather than a musical composition, he was required to show duplication or sampling, not mere imitation. Finding no such evidence, the court granted summary judgment in favor of French Montana. The district court then awarded costs to French Montana but denied attorneys’ fees. Richardson appealed the grant of summary judgment and the court’s decision not to enforce the local rules against French Montana while French Montana cross-appealed the denial of attorneys’ fees.

Richardson argued that the district court abused its discretion by failing to deem his unopposed factual statements admitted under the local rules. The Seventh Circuit found no abuse of discretion by the district court, reasoning that because neither party complied with the local rules, the district court acted appropriately in declining to enforce them against only one side.

The Seventh Circuit also affirmed the district court’s grant of summary judgment in favor of French Montana, explaining that “sound recording copyrights only protect those sounds that directly or indirectly recapture the actual sounds fixed in the recording from infringement.” Mere imitation, even if indistinguishable to the listener, is not infringement, and Richardson failed to present evidence of actual duplication of the sound recording.

Finally, the Seventh Circuit affirmed the district court’s denial of attorneys’ fees to French Montana. Although there is a “strong presumption in favor of awarding fees in copyright infringement cases,” the Seventh Circuit held that the district court properly applied the four-factor Fogerty [...]

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Enablement: Skilled artisan’s knowledge no substitute for adequate written description

by | Oct 30, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission’s (Commission) decision that a water filtration patent was invalid for lack of written description and enablement because the scope of the asserted claim was not enabled by the patent’s specification. Brita LP v. International Trade Commission, Case No. 24-1098 (Fed. Cir. Oct. 15, 2025) (Prost, Reyna, Chen, JJ.)

Brita filed a complaint at the Commission alleging that Vestergaard Frandsen and Helen of Troy infringed its water filtering patent. The main dispute focused on the patent’s only independent claim, which in part recites a “gravity-fed water filter, comprising filter media including at least activated carbon and a lead scavenger” that achieves a “Filter Rate and Performance (FRAP) factor of about 350 or less.” The patent identifies several types of filter media, including carbon filters.

The administrative law judge (ALJ) construed the term “filter usage lifetime claimed by a manufacturer or seller of the filter” to mean “the total number of gallons of water that a manufacturer or seller has validated can be filtered before the filter is replaced.” Based on this construction, the ALJ issued an initial determination finding that the asserted claims met the written description and enablement requirements.

Brita sought review of the initial determination before the full Commission. On review, the Commission reversed the ALJ’s finding of a violation, concluding that the “filter usage” term was indefinite, the asserted claims lacked adequate written description, and the claims were not enabled with respect to non-carbon block filters. Brita appealed.

To satisfy the written description requirement, a patent must demonstrate that the inventor was in possession of the claimed invention at the time of filing. This means the specification must adequately support each claim. In this case, the Federal Circuit found that the specification only supported carbon block filters meeting the claimed FRAP factor, not the broader category of “filter media” as claimed. As a result, the Court found that the asserted claims failed the written description requirement.

The Federal Circuit emphasized that the patent specification failed to support the broad claim language because of its narrow focus on carbon block filters. Specifically, the specification:

  • Described only carbon blocks, with other filter media mentioned solely as tested examples for FRAP factor
  • Provided specific formulations for carbon blocks only
  • Illustrated only carbon block filters in the figures
  • Made clear distinctions between carbon blocks and other filter types.

The Federal Circuit found persuasive the inventor’s testimony that only carbon block filters were created to meet the FRAP factor.

The Federal Circuit also affirmed the Commission’s finding that the claims were invalid for lack of enablement. Under the Federal Circuit’s 1988 In re Wands decision, enablement requires that a person of ordinary skill in the art be able to make and use the invention without undue experimentation. The Court found no reversible error in the Commission’s conclusion that undue experimentation would be required for filters other than carbon blocks to meet the claimed FRAP factor. The [...]

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Failure to reassess subject matter eligibility after similar claims invalidated justifies attorneys’ fees

by | Oct 30, 2025 |

Following a dismissal on the pleadings, the US District Court for the Southern District of New York granted the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285 after concluding that the asserted patent was objectively invalid under 35 U.S.C § 101. Linfo, LLC v. Aero Global, LLC, Case No. 24-cv-2952 (S.D.N.Y. Oct. 15, 2025).

Linfo sued Aero Global alleging infringement of a patent directed to a system with methods and a user interface for discovering and presenting information in text content with different view formats. The patented system would allow a user to sort through online hotel reviews, for example, by toggling a button to show only positive comments, or only comments related to room service.

One week after filing its complaint, Linfo proposed an early-stage settlement of $49,000, which Aero Global did not accept. Subsequently, in a separate case involving the same patent, another judge in the Southern District of New York found the patent invalid. After Aero notified the court of the decision, Linfo sought to dismiss the case without prejudice, and Aero opposed. Linfo then requested a stay pending appeal of the other’s judge’s decision, which the court denied. Linfo then contacted Aero to propose the parties “walk away to close the matter.” Aero responded that it would agree to dismissal if Linfo reimbursed Aero for its fees incurred. Linfo did not respond, after which the court concluded that Linfo was collaterally estopped from asserting infringement of the patent and granted Aero’s motion for judgment on the pleadings.

Aero thereafter sought attorneys’ fees under § 285, arguing that the asserted patent was objectively invalid under § 101. The district court agreed, finding that the litany of cases published after the Supreme Court’s 2014 Alice v. CLS decision should have made clear to Linfo and its counsel that the asserted patent was directed precisely to the kind of abstract concept that Alice deemed unpatentable. Linfo argued that since the patent was issued after the Alice decision, it was reasonable for Linfo to assume the patent examiner considered Alice as part of the USPTO’s decision-making process. The district court rejected this argument, finding no evidence that the USPTO evaluated whether the patent was directed to patent eligible subject matter and, more importantly, finding that numerous cases post-dating the patent’s issuance invalidated patents similar to Linfo’s patent.

Linfo argued that it was reasonable for it to continue the case because it received favorable claim construction rulings and litigated against other defendants that had not filed § 101 challenges. The court rejected this argument, explaining that judicial construction of a patent claim after a claim construction hearing says little about whether that claim is eligible under § 101, given that claim construction and patent eligibility are distinct inquiries.

The court considered Linfo’s and its attorney’s litigation history and found several indicia suggesting that Linfo and its counsel brought this case to induce settlement rather than to reach the merits. The court noted that Linfo had asserted the challenged patent [...]

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When patent law meets free speech: Anti-SLAPP appellate jurisdiction

by | Oct 30, 2025 |

The US Court of Appeals for the Federal Circuit determined that it had jurisdiction over an interlocutory appeal from a district court’s denial of a California anti-SLAPP (Strategic Lawsuit Against Public Participation) motion in a trade secret and inventorship case, finding such a denial was immediately appealable under the collateral order doctrine. On the merits, the Federal Circuit vacated and remanded the district court’s decision. IQE, plc v. Newport Fab, LLC, DBA Jazz Semiconductor, et al., Case No. 24-1124 (Fed. Cir. Oct. 15, 2025) (Hughes, Stark, Wang, JJ.)

IQE sued Jazz Semiconductor, Tower Semiconductor, and other entities and individuals (collectively, Tower) for violation of the Defend Trade Secrets Act, correction of inventorship under 35 U.S.C. § 256, and five claims arising under California state law, including trade secret misappropriation and intentional interference with prospective economic advantage. Tower moved to dismiss for failure to state a claim and simultaneously filed an anti-SLAPP motion to strike the claims for misappropriation and intentional interference arising under state law. The district court denied Tower’s motion to strike. Tower appealed to the US Court of Appeals for the Ninth Circuit.

The Ninth Circuit determined that under 28 U.S.C. § 1295(a) the Federal Circuit would have had jurisdiction at the time the appeal was filed. The Ninth Circuit explained that the Federal Circuit had subject matter jurisdiction over the appeal because the complaint asserted a claim for correction of inventorship, a cause of action arising under federal patent law. The Ninth Circuit further concluded that the Federal Circuit had appellate jurisdiction under Ninth Circuit law since the denial of an anti-SLAPP motion is an immediately appealable order under the collateral order doctrine. The Ninth Circuit therefore transferred the appeal to the Federal Circuit.

The Federal Circuit noted that the appeal raised a jurisdictional question of first impression: whether the Federal Circuit has jurisdiction over an appeal from a district court’s denial of an anti-SLAPP motion before entry of final judgment. The Federal Circuit agreed with the Ninth Circuit that it has subject matter jurisdiction over claims created by federal patent law. The Federal Circuit noted that appellate jurisdiction typically is limited to a final decision by the district court, but the collateral order doctrine provides a narrow exception that allows an interlocutory appeal when a trial court’s order affects rights that will be irretrievably lost in the absence of an immediate appeal. The Court analyzed the three collateral order factors and determined that an anti-SLAPP motion to strike under California law fits squarely within the collateral order exception to the final judgment rule.

IQE argued that jurisdiction was improper for two reasons:

  • IQE filed an amended complaint after Tower’s appeal, suggesting the district court must revisit the motion.
  • Some circuits have held that state anti-SLAPP statutes conflict with the Federal Rules of Civil Procedure.

The Federal Circuit rejected both arguments, finding the amended complaint improper under Ninth Circuit precedent and deferring to the Ninth Circuit’s view that California’s anti-SLAPP law applies in federal court. [...]

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USPTO Director to decide AIA petitions

by | Oct 23, 2025 | ,

The United States Patent and Trademark Office (USPTO) issued a memorandum on October 17, 2025, titled “Director Institution of AIA Trial Proceedings,” providing updated guidance to the Patent Trial & Appeal Board regarding the standards and procedures for instituting trial proceedings under the America Invents Act (AIA), including inter partes review (IPR) and post-grant review (PGR).

Since the AIA’s enactment in 2012, the Board’s trial proceedings have become a central mechanism for challenging the validity of issued patents. The institution phase, in which the Board decides whether to proceed with a trial, has been shaped by a series of precedential decisions and evolving USPTO policies, particularly regarding discretionary denials under 35 U.S.C. §§ 314(a) and 325(d).

The October 17, 2025, memorandum states that to “improve efficiency, consistency, and adherence to the statutory requirements for institution of trial, effective October 20, 2025, the Director will determine whether to institute trial for [IPR and PGR] proceedings.” If the Director determines that review is appropriate based on discretionary, merits-based, or other considerations, the USPTO will issue a summary notice granting institution for at least one challenged claim. If the Director determines review is not appropriate, the USPTO will issue a summary notice denying institution. For cases involving novel or complex issues, the Director may issue a detailed decision or refer the matter to one or more Board judges. A three-member Board panel will conduct all instituted reviews. The memorandum also notes that the USPTO has issued more than 580 prior decisions under interim processes that offer guidance on handling of discretionary factors.



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Double trouble: Proposed IPR institution changes would limit duplicative proceedings

by | Oct 23, 2025 | ,

The United States Patent and Trademark Office (USPTO) proposed changes to the rules governing inter partes reviews (IPRs) before the Patent Trial & Appeal Board, including setting limits on use of IPR proceedings for patent claims that have already been challenged in a prior proceeding. According to the USPTO, the proposal is aimed at preventing duplicative litigation against patent holders and promoting fairness, efficiency, and predictability in patent disputes.

The Notice of Proposed Rulemaking introduces changes to 37 C.F.R. § 42.108 that would bar the institution of IPRs in cases where:

  • A petitioner refuses to stipulate that it won’t pursue invalidity challenges under §§ 102 or 103 in other venues, such as a district court or the US International Trade Commission (ITC).
  • The challenged claims were found not invalid or not unpatentable in a prior district court, ITC, Board reexamination, or Federal Circuit proceeding.
  • Parallel litigation involving the patent will likely reach a decision before the final IPR written decision.

The proposed rule would provide an exception to the proposed IPR limitations in “extraordinary circumstances,” such as a bad faith institution of a previous IPR or a substantial change in law that renders a prior challenge irrelevant.

The USPTO explained that the proposed changes will offer greater certainty for patent owners by reducing serial validity challenges, improving judicial efficiency by minimizing duplicative proceedings, and facilitating lower litigation costs and stronger investment incentives. The USPTO noted that the changes would benefit smaller technology companies, which often lack the litigation resources of larger companies and are more vulnerable to the effects of weaker patent rights.

The proposed changes would represent a significant shift in the availability of IPR for petitioners and would alter the timing and strategy of decisions about whether to pursue an IPR. Comments on the proposed rule changes are due by November 17, 2025, and can be submitted via the federal eRulemaking portal.



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