IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Trademark appeal"
Subscribe to Results for "Trademark appeal"'s Posts

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 Cir. Dec. 9, 2025) (nonprecedential) (Prost, Chen Hughes, JJ.)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.



read more

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 [...]

Continue Reading



read more

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.



read more

Precedential shift: USPTO clarifies patentability of AI training methods

by | Nov 20, 2025 |

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims directed to training machine learning models. Ex parte Desjardins, Appeal No. 24-000567 (ARP Sept. 26, 2025) (precedential).

The Board had previously concluded that claims covering continual learning techniques (such as adjusting model parameters to maintain performance across sequential tasks) were directed to an unpatentable abstract idea. The ARP, which included the USPTO Director, reversed that determination, holding that the claims integrated the abstract concept into a practical application by improving the functioning of machine learning models themselves. However, the ARP still rejected the claims under § 103 for obviousness.

Key takeaways

  • Technical improvements matter. Artificial intelligence (AI)-related inventions can satisfy Alice Step 2A when they demonstrate technical improvements, such as mitigating catastrophic forgetting and reducing storage complexity.
  • No blanket exclusion. The opinion cautions against categorically excluding AI innovations under § 101 and emphasizes that §§ 102, 103, and 112 remain the proper tools for assessing patent scope.
  • Precedential impact. The decision signals the USPTO’s commitment to aligning examination practices with US Court of Appeals for the Federal Circuit precedent while fostering innovation in AI and machine learning.

Practice note: For applicants, this precedential designation underscores the importance of framing AI-related claims around specific technical improvements rather than abstract concepts, which can be pivotal in overcoming § 101 challenges.



read more

Well, well, well: Indefinite claims turn out to be a typo

by | Nov 20, 2025 |

The US Court of Appeals for the Federal Circuit reversed a district court ruling that invalidated patent claims for indefiniteness, finding that the disputed language was a minor clerical error. Canatex Completion Solutions, Inc. v. Wellmatics, LLC, et al., Case No. 24-1466 (Fed. Cir. Nov. 12, 2025) (Moore, Prost, Taranto, JJ.)

Canatex sued Wellmatics and several GR Energy entities for infringing its patent directed to a releasable connection for a downhole tool string. The patent covers a two-part device used in oil and gas wells that allows operators to disconnect and retrieve the upper part of the tool string while leaving the lower part in the well if it becomes stuck.

The patent’s claims, abstract, and specification include the phrase “the connection profile of the second part.” During claim construction, the defendants argued that the phrase lacked an antecedent basis, rendering the claims indefinite. Canatex responded that the phrase should have read “the connection profile of the first part” and that a skilled artisan would immediately recognize the error. Canatex asked the district court to construe the phrase accordingly.

The district court disagreed, finding that the “pervasiveness of the error” in both the claims and the specification suggested that the error “was an intentional drafting choice and not an error at all.” The district court added that Canatex’s failure to seek correction from the United States Patent and Trademark Office suggested that the error was neither minor nor evident on the face of the patent. The district court found all asserted claims invalid for indefiniteness. Canatex appealed.

The Federal Circuit reversed. The Court found the error obvious and determined that a skilled artisan would recognize only one reasonable correction, which was changing “second” to “first.” The Court characterized the mistake as a minor clerical or typographical error and rejected arguments that alternative interpretations were plausible. The Court emphasized that its conclusion was consistent with the intrinsic evidence.



read more

Pick a lane: USPTO Director nixes IPR for inconsistent claim construction positions

by | Nov 20, 2025 |

The Director of the United States Patent and Trademark Office (USPTO) vacated a Patent Trial & Appeal Board decision instituting an inter partes review (IPR) proceeding after finding that the petitioner advanced inconsistent claim construction positions before the Board and in parallel district court litigation without adequate justification. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (PTAB Nov. 5, 2025) (Stewart, USPTO Dir.)

Intellectual Ventures II LLC (IV), the patent owner, requested director review of the Board’s decision granting institution, arguing that the decision should be reversed because Tesla, Inc., the petitioner, failed to adequately explain why it advanced inconsistent claim construction positions before the district court and the Board.

In the district court, Tesla opposed IV’s plain and ordinary meaning construction of the claim limitation “generating said target feature information from said data statistics” in independent claim 1. Tesla argued that the limitation was indefinite because a person of ordinary skill in the art could not determine its meaning and scope with reasonable certainty. In contrast, before the Board, Tesla asserted that “no claim term requires express construction” and that the challenged claims should be given their plain and ordinary meaning.

IV contended that Tesla’s justification (that it was statutorily prohibited from raising indefiniteness challenges in an IPR) was insufficient to explain the divergent positions. While the Board’s rules do not categorically prohibit petitioners from taking inconsistent claim construction positions across forums, petitioners must explain why those differences are warranted.

The Director agreed with IV, finding Tesla’s rationale inadequate. The Director explained that simply asserting that indefiniteness cannot be raised in an IPR does not explain why a petitioner should be permitted to raise inconsistent invalidity challenges in two forums. In vacating the institution decision, the Director emphasized that permitting such inconsistencies without proper justification would undermine the USPTO’s goal of “providing greater predictability and certainty in the patent system.”



read more

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.



read more

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.



read more

Associational standing requires concrete, non-speculative harm

by | Oct 16, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing a lawsuit against the United States Patent and Trademark Office (USPTO) for lack of associational standing since no member of the association had standing to sue. US Inventor, Inc. v. United States Patent and Trademark Office, Case No. 24-1396 (Fed. Cir. Oct. 3, 2025) (Lourie, Reyna, Stark, JJ.)

US Inventor and National Small Business United (collectively, the plaintiffs) jointly filed a petition for rulemaking at the USPTO to amend the regulations that control the USPTO’s discretion to institute inter partes review (IPR) or post-grant review (PGR) proceedings. The plaintiffs proposed five instances in which the USPTO would have no discretion to institute an IPR or PGR. Separately, the USPTO issued a request for public comments regarding institution discretion two months after the plaintiffs filed their petition.

Eventually, the USPTO denied the petition, citing redundancy with the request for public comment. The USPTO assured the plaintiffs that their request would be considered as a public comment.

In response, the plaintiffs filed a complaint in federal court claiming that the USPTO had committed three errors:

  • The USPTO’s assurance that the plaintiffs’ requests would be considered “in unspecified ‘future rulemaking’” violated its duty to conclude the matter in an appropriate amount of time, as required by the Administrative Procedure Act (APA).
  • Under the APA, the USPTO failed to state adequate grounds for denial.
  • The USPTO violated the America Invents Act (AIA) by “fail[ing] to promulgate notice-and-comment rulemaking.”

The USPTO filed a motion to dismiss, arguing that the plaintiffs lacked standing. The district court granted the motion, finding that the plaintiffs had neither organizational nor associational standing. The plaintiffs appealed.

Because the issue of associational standing was not specific to patent law, the Federal Circuit applied the law of the US Circuit Court for the District of Columbia, which reviews standing de novo.

Of the three requirements for associational standing (standing of at least one associational member, applicability of the issue to the association’s purposes, and individual member participation not required for the claim or relief), only the first was at issue.

The Federal Circuit concluded that since no member of the plaintiffs’ organizations had standing to sue, the plaintiffs themselves did not have associational standing. The Court noted that the plaintiffs had failed to claim anything more than speculative harm to any member resulting from the USPTO’s denial of plaintiffs’ petition. The Court found the “risk” of patent cancellation during an IPR or PGR proceeding insufficiently “actual or imminent” to afford any member standing to sue.

The Federal Circuit explained that a requisite third-party action outside of the plaintiffs’ control would need to occur before any harm to the plaintiffs’ members could be concretely realized. Third-party actions, including the filing of a petition for an IPR or PGR proceeding, the USPTO’s institution of such proceeding, and the USPTO’s ultimate decision in such proceeding, constitute multiple steps in the chain of events that might result in harm [...]

Continue Reading



read more

Bank on it: Likelihood of confusion analysis requires factual consistency when evaluating DuPont factors

by | Oct 2, 2025 |

The US Court of Appeals for the Federal Circuit reversed in part a decision by the Trademark Trial & Appeal Board and remanded for new analysis of two factors under the Dupont likelihood of confusion test. The Court emphasized that the factual determination in factor two (similarity of the parties’ goods or services) should remain consistent through the analyses for factors one and six. Apex Bank v. CC Serve Corp., Case No. 23-2143 (Fed. Cir. Sept. 25, 2025) (Moore, Hughes, Cunningham, JJ.)

CC Serve has held a registration for the word mark ASPIRE in connection with credit card services since 1998. In 2019, Apex Bank, a Tennessee-based banking chain, filed intent-to-use applications at the US Patent & Trademark Office (PTO) for marks incorporating ASPIRE BANK for use in “banking and financing services.” CC Serve, which partners with banks to issue and service credit cards, filed a letter of protest during Apex’s trademark prosecution. Despite CC Serve’s objections, the PTO published Apex’s marks in December 2019. CC Serve then formally opposed the marks, and the Board sustained the opposition, finding a likelihood of consumer confusion. Apex appealed.

The Federal Circuit reviewed the Board’s findings under the DuPont framework, which assesses likelihood of confusion based on multiple factors. Apex challenged the Board’s analysis of three specific factors:

  • Factor two: Similarity of the parties’ goods/services
  • Factor six: Strength of the prior mark in the marketplace
  • Factor one: Similarity of the marks themselves

The Federal Circuit upheld the Board’s finding under factor two, agreeing that “credit card services” and “banking/financing services” are highly similar based on their definitions and market overlap.

However, the Federal Circuit found fault with the Board’s analysis under factor six, which evaluates third-party use of similar marks to determine the strength of the contested mark. Apex submitted many examples of ASPIRE marks used in both the credit card and broader financial services industries. The Board, however, narrowed its focus to only those marks used in credit card services, excluding broader banking and financial services. The Federal Circuit concluded that this was inconsistent with the Board’s finding under factor two regarding the similarity of the parties’ goods and services. The Court instructed that on remand, the Board should consider third-party ASPIRE marks across both industries.

The Federal Circuit also directed the Board to revisit factor one, which assesses the similarity of the marks in light of the strength of the prior mark. Whether the strength of CC Serve’s mark is diminished when viewed in the broader financial services context could affect the “overall commercial impression” of the marks and the likelihood of confusion.

The Federal Circuit emphasized that factual determinations, particularly regarding the similarity of goods and services, must be applied consistently across the DuPont factors. The Court therefore remanded the case to the Board for reconsideration of factors one and six considering this guidance.



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES