In mCom IP, LLC v. City National Bank of Florida (Fed. Cir. May 15, 2026), the Federal Circuit affirmed a district court decision dismissing mCom’s patent infringement complaint under Rule 12(b)(6) for failure to state a claim, on the basis that the asserted claims of mCom’s U.S. Patent No. 8,862,508 (relating to electronic banking systems)
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The Futility in Appealing PTAB Institution Decisions
Last month, in Federal Express Corp. v. Qualcomm Inc., Appeal No. 2024‑1236 (Fed. Cir. Apr. 29, 2026), the Federal Circuit again addressed the reach of the statutory bar on its review of Patent Trial and Appeal Board decisions to institute inter partes reviews. The case arose from Qualcomm’s IPR petition challenging a FedEx patent…
The Propriety and Cost of Discretionary Denial
In 2020, Apple and several other parties collectively sued the Patent Office in a U.S. district court in California. They alleged that guidance* the Director gave the Patent Trial and Appeal Board—on how, while parallel patent litigation was pending, to exercise the Director’s discretion to deny inter partes review petitions—violated the Administrative Procedure Act (APA),…
The Power of Prophetic Disclosures
Last summer, the Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that claims in a pair of patents owned by Agilent Technologies claiming chemically modified CRISPR guide RNAs are unpatentable. Agilent Techs., Inc. v. Synthego Corp., 139 F.4th 1319 (Fed. Cir. 2025). The court agreed that an earlier published international patent application…
The High Hurdles in Disqualifying Prior Art
The Federal Circuit’s decision last fall in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Appeals 2025‑1210, ‑1211 (Fed. Cir. Oct. 30, 2025), reh’g and reh’g en banc denied (Jan. 22, 2026) (link), offers important guidance on the meaning of disclosures “by another” under pre-AIA 35 U.S.C. §§ 102(a) and (e)—a word-pairing…
PTAB’s Delay in Instituting IPRs Is Not Reviewable on Appeal
Practitioners before the Patent Trial and Appeal Board are well-acquainted with the statutory bar on judicial review of institution decisions. But what happens when the Board defers—for more than a year—a decision to rehear its non-institution decision, waiting for the Federal Circuit to clarify claim construction in parallel litigation involving the same patent and same…
Review Panel of the PTAB Weighs in on Eligibility of AI Claims
In Ex parte Desjardins, Appeal 2024-000567 (Review Panel of the PTAB, Sept. 26, 2025), the PTAB Appeals Review Panel (“Review Panel”) vacated a decision of the PTAB that had sua sponte entered a new ground of rejection of claims relating to artificial intelligence (AI) systems under 35 U.S.C. § 101. The new Under Secretary of…
Federal Circuit Decides First Derivation Appeal
Seven years after the PTAB instituted the first AIA derivation proceeding, the Federal Circuit finally issued its first opinion in an appeal of a derivation decision, Global Health Solutions, LLC v. Selner, No. 23-2009 (Fed. Cir. 2025), affirming the Board’s decision that the petitioner did not carry its burden to show respondent (Selner)…
Fed. Cir. Provides Insight on Conditional Features
In Sierra Wireless v. Sisvel S.P.A., Appeals 2023-1059, -1085, -1089, -1125 (Fed. Cir. Mar. 10, 2025), the Federal Circuit vacated and remanded a PTAB decision that had found claims 1, 2, and 6-8 of U.S. Patent No. 7,869,396 (“the ’396 patent”) obvious. In particular, the Federal Circuit found that the features in claim 1 of…
Federal Circuit uses Plain Language for Statutory Interpretation in Lynk Labs
In Lynk Labs v. Samsung Electronics, the Federal Circuit determined that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” The Court affirmed the PTAB’s determination that challenged claims of U.S. Patent No. 10,687,400 (the ’400 patent), which relates to light emitting diodes (LEDs), are…