Patent Trial & Appeal Board Archives

Patent Trial & Appeal Board

Settlement dispute not arising under patent law doesn’t “survive” Federal Circuit jurisdiction

by Tyler Jackson | Sep 17, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that it lacked appellate jurisdiction over a contract dispute arising from a patent settlement agreement because resolving the dispute did not necessarily require deciding a substantial question of patent law. The Court transferred the appeal to the Fifth Circuit. T-Mobile US, Inc. v. KAIFI LLC, Case No. 25-1006 (Fed. Cir. Aug. 28, 2026) (Taranto, Schall, Chen, JJ.)

KAIFI sued T-Mobile in the US District Court for the Eastern District of Texas, alleging infringement of a patent directed to Wi-Fi calling technology. T-Mobile subsequently requested ex parte reexamination (EPR) of the patent. While the EPR remained pending, the parties settled the infringement action.

Under the settlement agreement, T-Mobile received a license to the patent, made an initial payment, and agreed to make an additional contingent payment if any “Asserted Claim survives the EPR.” The agreement defined the asserted claims as the patent claims KAIFI had accused T-Mobile of infringing and included a covenant by T-Mobile not to challenge the validity or enforceability of the licensed patents. Texas law governed the agreement.

The United States Patent & Trademark Office (USPTO) later issued a Reexamination Certificate confirming the patentability of multiple asserted claims without amendment. T-Mobile nevertheless declined to make the contingent payment and filed a declaratory judgment action. T-Mobile argued that a claim “survived” reexamination only if it retained sufficient scope to support KAIFI’s previously asserted infringement theory. T-Mobile also asserted frustration of purpose and lack of mutual assent. KAIFI counterclaimed for breach of contract.

The district court granted summary judgment for KAIFI, concluding that the settlement agreement was unambiguous and that an asserted claim “survives” an EPR if the USPTO confirms the claim as patentable in the Reexamination Certificate. The court ordered T-Mobile to make the additional payment under the agreement. T-Mobile appealed to the Federal Circuit.

The Federal Circuit independently considered its jurisdiction under 28 USC § 1295(a)(1). Because KAIFI’s breach of contract claim arose under state law, Federal Circuit jurisdiction depended on whether the claim fell within the “special and small category” of state-law claims satisfying the Supreme Court’s four-part test of Gunn v. Minton (2013). That test assesses whether a federal issue is:

Necessarily raised;
Actually disputed;
Substantial; and
Capable of resolution in federal court without disrupting the federal-state balance.

The Federal Circuit concluded that the first Gunn requirement was not satisfied because KAIFI could prevail on its contract claim without resolving any patent-law issue. One permissible interpretation of “survives the EPR” was its ordinary meaning, which is that an asserted claim survives when the USPTO confirms its patentability rather than cancels it. That interpretation required only consideration of the agreement and the Reexamination Certificate, not resolution of claim construction, prosecution disclaimer, inequitable conduct, or another issue of substantive patent law.

The Federal Circuit rejected T-Mobile’s argument that determining whether the claims “survived” necessarily required analyzing whether KAIFI altered the scope of the claims through positions taken during reexamination. The Court explained that T-Mobile’s theory was [...]

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APA compliant? Board’s use of invalidity basis not raised in IPR petition may be harmless

by Cecilia Choy, PhD and Lisette Donewald | Sep 17, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board’s use of a reference that was not urged by the petitioner in an inter partes review (IPR) petition was harmless since the Court agreed with the Board’s analysis and conclusion that all challenged claims were unpatentable as obvious on alternative grounds raised in the petition. Netlist, Inc. v. Micron Technology, Inc., Case No. 2024-1707 (Fed. Cir. Sept. 2, 2026) (Reyna, Linn, Stark, JJ.)

Netlist owns a patent directed to improving the performance and memory capacity of memory boards. The patent describes using buffers between a memory controller and memory devices. Those buffers contain data paths that can be selectively enabled during read and write operations. Samsung filed a petition for IPR challenging certain claims of the patent as obvious over the combination of two prior art patents, Ellsberry and Halbert. The Board instituted review and determined that Samsung met its burden to show that the challenged claims were obvious over Ellsberry alone or in combination with Halbert. Netlist appealed.

The Federal Circuit reviewed the Board’s decision for compliance with the Administrative Procedure Act (APA) and agreed with the Board’s technical review of the prior art in finding the challenged claims obvious. The APA requires that a Board decision identify the reasons and bases in the record for reaching its conclusions. In an IPR proceeding, this generally requires the Board to proceed in accordance or conformance with the challenge grounds presented in the IPR petition, and the Board may not “depart from the petition and institute a different IPR of its own design.” In the past, the Federal Circuit has found error where the Board held claims unpatentable based on grounds that were not urged by the IPR petitioner.

Netlist argued that even if the Board had substantial evidence to find that Ellsberry taught most limitations at issue, the Board erred by using a Netlist patent in its analysis to fill a gap in terms of a claimed limitation. The Board cited the Netlist patent for its teaching that an additional clock cycle could account for delay as data traveled through a buffer. Netlist argued that it was improper to use the Netlist patent to supply a teaching of a claim limitation when Samsung did not present this reference as an invalidity ground in its IPR petition. Netlist argued that the Board expanded the role of the Netlist patent from being mere evidence of general skill in the art to that of a prior art reference in violation of the APA restriction against departing from the petition to find claims invalid on grounds of “its own design.”

The Federal Circuit concluded that any potential error arising from the Board’s use of the Netlist patent was harmless since the Board found alternatively that Ellsbery alone without relying on the Netlist patent taught the limitations in the challenged claims.

Practice note: The decision leaves unresolved when the Board’s use of a reference not relied on in the [...]

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Shared function sufficient for a proper Markush group

by Anisa Noorassa | Sep 10, 2026 | Patents

In a recently designated informative decision, the Patent Trial & Appeal Board reversed an examiner’s rejection of claims reciting structurally distinct microRNAs (miRNAs) as an improper Markush group. The Board found the claimed alternatives sufficiently related because they performed similar functions in the context of the invention. Ex parte Chowdhury, Appeal No. 2025-002261 (PTAB Feb. 5, 2026) (Flax, Katz, Hardman, A.P.JJ.) (designated informative Aug. 25, 2026).

The patent application at issue concerns methods for assessing and treating radiation-induced damage using levels of particular miRNAs in a patient’s serum. The claims recited groups of different miRNAs whose measured levels could be used to assess radiation damage and inform treatment decisions.

The examiner rejected the claims as containing improper Markush groupings. The examiner found that the recited miRNAs did not share substantial structural similarity because each had a different nucleotide sequence. Their only structural similarity was that each comprised nucleotides. The examiner also found that the miRNAs did not belong to a recognized chemical class that would have been expected to behave similarly or to be interchangeable for achieving the same result.

The Board reversed. It explained that a proper Markush group generally requires the listed alternatives to belong to a recognized physical or chemical class or to be sufficiently related by a common property or function. In assessing that requirement, however, the relevant inquiry is whether the alternatives are interchangeable for the purposes of the claimed invention.

The Board found that the claimed miRNAs satisfied that standard. Although the individual miRNAs were structurally different and did not necessarily perform the same biological function, the claims did not depend on those biological functions. Instead, each miRNA served the same claimed purpose: its serum level could be quantified and used as an indicator relevant to radiation-induced damage and treatment.

As the Board explained, the listed miRNAs did not need to function biologically in the same manner or produce the same biological result. They needed only to be quantifiable and interchangeable as markers for the purposes of the claimed method. Because the specification described the recited miRNAs as performing that common function, the Board found that they constituted a proper Markush grouping.

Result-oriented claims fail to pass § 101 muster; industry standards may prove individual claim limitations

by Courtney Seams | Sep 10, 2026 | Patents

The US Court of Appeals for the Federal Circuit concluded that claims broadly directed to optimizing signal constellations for a particular result were patent ineligible, but upheld claims directed to specific constellations. The Court also confirmed that industry standards may be used on a limitation-by-limitation basis to prove infringement. Constellation Designs LLC v. LG Electronics Inc., et al., Case No. 24-1822 (Fed. Cir. Aug. 31, 2026) (Stoll, Lourie, JJ.; Oetken, District J., sitting by designation).

Constellation Designs sued LG for infringement of four patents directed to digital communication systems using signal constellations to transmit and decode data. Constellation accused LG televisions compatible with the ATSC 3.0 over-the-air television broadcast standard, specifically its A/322 protocol. The asserted claims fell into two groups: claims reciting geometrically spaced symbol constellations optimized for capacity using parallel decode (PD) capacity (optimization claims) and claims reciting specific non-uniform constellations (constellation claims).

The district court granted Constellation summary judgment that all asserted claims were patent eligible under 35 USC § 101. Following trial, a jury found that LG willfully infringed the asserted claims and awarded Constellation about $1.68 million in damages. The district court denied LG’s post-trial motions challenging infringement and damages, and entered an ongoing royalty of $6.75 per television. LG appealed.

Addressing patent eligibility, the Federal Circuit distinguished between the optimization claims and the constellation claims. At step one of the Alice framework, the Court concluded that the optimization claims were directed to the abstract idea of optimizing a constellation for PD capacity. The claims recited a desired result (improved capacity at a reduced signal-to-noise ratio) but did not recite how to achieve that result. The Court analogized the claims to the result-oriented claims found ineligible in other cases, explaining that the claims broadly covered essentially all ways of optimizing a constellation for PD capacity.

Although the specification described techniques for performing the optimization, the claims did not recite those details. The Federal Circuit explained that the § 101 inquiry focuses on the claim language and that technical details disclosed only in the specification cannot be imported into the claims to establish eligibility. At Alice step two, the Court found no inventive concept because Constellation’s alleged inventive concept (optimizing non-uniform constellations based on PD capacity) was the abstract idea itself. The Court therefore vacated the district court’s summary judgment of eligibility as to the optimization claims.

The Federal Circuit reached a different conclusion as to the constellation claims. Those claims did not broadly claim optimization but instead recited specific constellations developed using techniques described in the patents. The Court found that this distinction “makes all the difference” because the constellation claims recited a concrete implementation of a technological improvement directed to overcoming limitations in constellation capacity. The Court therefore affirmed the district court’s finding that those claims were patent eligible.

The Federal Circuit also affirmed the denial of LG’s motion for judgment as a matter of law of noninfringement. At trial, Constellation relied on the ATSC 3.0/A/322 standard to establish that the accused device met [...]

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Ministerial requirements aren’t enough: Post-AIA prior art priority requires § 112 written description support

by Dexter Hamilton | Aug 20, 2026 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit vacated a Patent Trial & Appeal Board final written decision finding challenged claims obvious, concluding that the Board applied the wrong legal standard in determining whether an asserted prior art reference could obtain the filing date of an earlier provisional application based only on satisfaction of “ministerial requirements.” Dental Monitoring SAS v. Align Technology, Inc., Case No. 25-1752 (Fed. Cir. Aug. 10, 2026) (Lourie, Stall, Taranto, JJ.)

Dental Monitoring owns a patent directed to a method for acquiring and analyzing an image of a patient’s dental arch. Align Technology petitioned for inter partes review (IPR) of the patent based on three references: Salah, Carrier, and Maninis.

Carrier’s status as prior art was central to the dispute. Carrier claimed priority to a provisional application filed before the effective filing date of Dental Monitoring’s patent, but Carrier’s nonprovisional application was filed afterward. Thus, Carrier qualified as prior art only if it could obtain the benefit of its provisional application’s filing date under America Invents Act (AIA) § 102(d)(2).

Dental Monitoring argued that under the Federal Circuit’s 2015 decision in Dynamic Drinkware v. National Graphics, Carrier could rely on the provisional filing date only if the provisional provided written description support for at least one claim of Carrier. The Board disagreed, concluding that Dynamic Drinkware addressed only pre-AIA law. Instead, relying on its precedential decision in Penumbra v. RapidPulse, the Board determined that a reference patent receives the filing date of an earlier application for AIA prior art purposes if it satisfies the “ministerial requirements” of §§ 119 and 120 and the earlier application describes the subject matter relied upon in the reference. Because Carrier’s provisional described the relied-upon subject matter, the Board treated Carrier as prior art as of the provisional filing date.

On the merits, the Board found the claims unpatentable as obvious over a combination of three references. Dental Monitoring appealed.

The Federal Circuit reviewed the statutory question de novo, concluding that §§ 102(d)(2), 119(e)(1), and 112(a) foreclosed the Board’s ministerial requirements approach.

Section 102(d)(2) provides that a patent or patent application may be effectively filed for prior art purposes as of an earlier application’s filing date if it is “entitled to claim a right of priority” under § 119 or the benefit of an earlier filing date under § 120. Section 119(e)(1), in turn, permits a nonprovisional application to claim priority to a provisional only when the invention disclosed in the later application is disclosed in the provisional “in the manner provided by” § 112(a). The Federal Circuit therefore concluded that § 102(d)(2) incorporates § 112(a)’s substantive written description requirement. The Court also found further support in the phrase “entitled to claim a right of priority,” because an applicant would only be “entitled to claim priority” by fulfilling the statutory requirements, including § 112’s written description requirement.

Align argued that Dynamic Drinkware did not apply because its analysis was limited to the pre-AIA version of § [...]

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USPTO extends deadline for requesting director review of decisions instituting trial

by Tori Lazerson | Jul 16, 2026 | Patents

The United States Patent and Trademark Office (USPTO) updated its director review process by extending the deadline for requesting director review of decisions made in Patent Trial & Appeal Board proceedings from 14 to 30 days.

Under 37 C.F.R. § 42.75(c)(1), a request for director review must be filed within the time period set forth in 37 C.F.R. § 42.71(d), unless the director grants an extension for good cause. Section 42 generally requires that a request for director review be filed within 14 days of a decision instituting trial or 30 days of a final decision or a decision denying institution.

In a precedential order in Light & Wonder, Inc. v. Evolution Malta Ltd., IPR2025-01072, Paper 30 (Director June 22, 2026), however, the director waived the 14-day deadline and extended it to 30 days. The USPTO has now incorporated that change into its published director review process.

The updated process explains that the deadline may be extended in exceptional circumstances, provided that “the trial has not progressed meaningfully.” Examples of exceptional circumstances include:

Dismissal of all or substantially all claims in co-pending litigation
Findings of fact and conclusions of law rendering all or substantially all challenged claims invalid in litigation
Violation of a Sotera stipulation

Parties seeking an extension based on exceptional circumstances must email Director_PTABDecision_Review@uspto.gov, copy counsel for all parties, and explain in three sentences or fewer why an extension is warranted. The remaining parties will then be given an opportunity to respond.

Too late to help: Inventorship fix fails to revive forfeited argument

by Amit Kumar Saha, PhD | Mar 19, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board, concluding that the retroactive effect of a correction of inventorship under 35 U.S.C. § 256 does not bar the application of forfeiture principles in inter partes review (IPR) proceedings, and that a patent owner that fails to timely raise an antedating theory during an IPR may forfeit reliance on a later corrected inventorship to resurrect that theory. Implicit, LLC v. Sonos, Inc., Case Nos. 20-1173; -1174 (Fed. Cir. Mar. 9, 2026) (Taranto, Stoll, Cunningham, JJ.)

Implicit owns patents directed to content rendering that originally named Edward Balassanian and Scott Bradley as co-inventors. Sonos filed IPR petitions against both patents, asserting unpatentability under 35 U.S.C. §§ 102 and 103, primarily based on Janevski, which had an effective prior art date of December 11, 2001.

To avoid Janevski as prior art, Implicit argued that the inventions were conceived and reduced to practice before December 11, 2001. It contended that Balassanian and Bradley conceived of the inventions and collaborated with another engineer, Guy Carpenter, to implement the invention prior to December 2001. Implicit argued that Carpenter’s work inured to the benefit of the named inventors, thereby antedating Janevski. The Board rejected Implicit’s argument and found the challenged claims unpatentable as anticipated or obvious over Janevski. The Board found Implicit’s evidence insufficient to establish conception and communication of the invention by Carpenter in a manner that would support an earlier reduction to practice.

Following the Federal Circuit’s and Supreme Court’s decisions in Arthrex v. Smith & Nephew addressing the Appointments Clause as applied to IPR proceedings, the case was remanded to permit Director review. While proceedings were ongoing, Implicit sought correction of inventorship under 35 U.S.C. § 256 to add Carpenter as a co-inventor. The United States Patent & Trademark Office (USPTO) granted the request and issued certificates of correction in August 2022. The Federal Circuit remanded the case to the Board to determine what impact, if any, the corrections had on the prior final written decisions. The Board concluded that equitable doctrines, including forfeiture, precluded Implicit from relying on the corrected inventorship to advance a new antedating theory. Implicit appealed.

The appeal presented two principal questions:

Whether the retroactive effect of a correction of inventorship under § 256 forecloses application of forfeiture principles in an IPR proceeding.
Whether the Board abused its discretion in finding that Implicit forfeited its right to assert a new antedating theory based on corrected inventorship.

Implicit argued that § 256 contains no temporal limitation and that corrections operate retroactively, requiring the Board to revisit its unpatentability determinations once Carpenter was added as an inventor. Sonos and the USPTO countered that Implicit had litigated the IPRs on a single inventorship theory and waited until after adverse final written decisions to change course.

The Federal Circuit affirmed on both grounds.

First, the Federal Circuit found that forfeiture principles may apply notwithstanding the retroactive effect of § 256. Although [...]

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USPTO signals new emphasis on US manufacturing in IPR and PGR institution decisions

by Lauren Hong | Mar 19, 2026 | Patents

The United States Patent and Trademark Office (USPTO) issued a Memorandum on March 11, 2026, signaling that the Patent Trial & Appeal Board may place increased weight on domestic manufacturing activity and the interests of small businesses when deciding whether to institute inter partes review (IPR) or post grant review (PGR).

The America Invents Act (AIA) established IPR and PGR proceedings as mechanisms for challenging the validity of issued patents before the Board. In establishing the framework for institution decisions, the statute directs the USPTO Director to consider broader policy concerns, including the impact on the US economy, the integrity of the patent system, and the efficient administration of the USPTO.

The Memorandum highlights concerns regarding the decline of US manufacturing, particularly in the electronics and computer sectors. Citing government studies, the USPTO notes that the offshoring of key industries has contributed to economic and national security vulnerabilities. According to the USPTO, these developments bear directly on the Director’s statutory obligation to consider the economic effects of Board institution decisions.

While some stakeholders contend that IPR and PGR proceedings protect US manufacturers and small businesses from weak patents, the USPTO observed that many of the most frequent petitioners are large companies that report little domestic manufacturing activity and have not made meaningful investments in US production. According to the Memorandum, this data prompted the USPTO to question whether the current discretionary institution framework adequately accounts for the interests of companies that do invest in domestic manufacturing.

As a result, the USPTO announced that certain factors related to US manufacturing and small businesses may now inform discretionary institution determinations. The USPTO encourages parties to address these considerations explicitly in their discretionary briefing.

When evaluating whether to institute an IPR or PGR, the Director may consider:

Whether the products accused of infringement in parallel litigation are manufactured in the United States or tied to domestic manufacturing investments.
Whether the patent owner produces competing products in the US.
Whether the petitioner qualifies as a small business that has been sued for patent infringement.

The Memorandum clarifies that manufacturing considerations are not limited to final assembly but may also encompass the production of components and situations in which products manufactured domestically are later processed abroad. For method claims, the relevant product for this analysis will be the device used to perform the claimed method.

These considerations apply to all to all IPRs and PGRs in which the due date for a patent owner discretionary brief has not yet elapsed.

The meaning is plain as day: Just follow the grammar

by Tyler Jackson | Feb 26, 2026 | Patents

The US Court of Appeals for the Federal Circuit reversed and vacated a decision by the Patent Trial & Appeal Board, explaining that the Board failed to consider common textual modifier language when applying the plain meaning to a disputed claim term. Netflix, Inc. v. DivX, LLC, Case No. 24-1541 (Fed. Cir. Feb. 13, 2026) (Moore, C.J.; Dyk, Taranto, JJ.)

DivX sued Netflix for infringing its patent directed to systems and methods for streaming partly encrypted media content. The patent uses encryption/decryption, a Digital Rights Management (DRM) technique, to protect streams of media content from unauthorized access or copying. This technique requires that cryptographic information be relayed to the playback device for users to watch streamed media content. The patent explains that encrypting parts of streamed media decreases the resources needed for encryption/decryption and provides the playback device with information on the portions that are encrypted and “common” decryption information.

Netflix petitioned for inter partes review (IPR) of all claims on the basis of obviousness. The Board rejected DivX’s proposed construction of limitation [l] of the representative claim: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.” DivX’s argued that the “encryption information” must be located “within the requested portions of the selected stream of protected video.” The Board deemed DivX’s proposed claim construction as “too restrictive,” concluding that the claim suggested that the encryption information just needed to identify encrypted portions of frames that themselves were “within the requested portions of the selected stream of protected video.”

In its final written decision, the Board agreed with Netflix that a person of skill in the art would have been motivated to combine the asserted prior art but held that the artisan would not have reasonably expected success in combining the prior art and that therefore Netflix did not establish obviousness of the challenged claims.

The Federal Circuit vacated the Board’s decision on appeal and remanded the matter. On remand, the Board again concluded that Netflix did not demonstrate obviousness but this time accepted DivX’s originally proposed claim construction. Netflix appealed.

The Federal Circuit found the Board’s construction of limitation [l] was erroneous, agreeing with Netflix that limitation [l] was taught by the asserted prior art combination. Using the plain language doctrine, the Court found that limitation [l] was susceptible to two interpretations: “the modifier ‘within the requested portions of the selected stream of protected video’ could modify either ‘encrypted portions of frames of video’ or ‘encryption information.’” Accordingly, the Court relied on the principle that where commas or other textual signals are not used, it is presumed that the modifier is tied to the nearest available semantically plausible modificand. The Court determined that only the “encrypted portions of frames of video” needed to be “within the requested portions of the selected stream of protected video.” The Federal Circuit also determined that the context of the claim itself, the specification, and the prosecution history supported the construction that [...]

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IPR estoppel doesn’t extend to ongoing ex parte reexamination

by Jolie B. Schenerman | Dec 11, 2025 | Patents

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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