CAFC Precedential - 2025 - AIA Proceedings
IPR Procedure
- In re Gesture 25-1075.pdf
Effect of prior Federal Circuit affirmances of PTAB IPR final written decisions on a parallel appeal from ex parte reexamination involving the same patent claims.: A Federal Circuit affirmance of invalidity produces a final judgment with immediate issue-preclusive effect, requiring dismissal of a later/parallel appeal as to claims already adjudicated unpatentable.
- Centripetal 23-2027.pdf
In an obviousness analysis, the Board must consider all properly presented evidence of secondary considerations (including copying) and assign it whatever weight the evidence warrants; it is reversible error to omit discussion of such evidence on the ground that the Board is not positioned to evaluate the broader litigation record.
Jurisdiction
- Mitek Systems 23-1687.pdf
Effect of post-filing events, including PTAB invalidity affirmed on appeal, on continuing DJ jurisdiction.: Even if jurisdiction must exist at filing, subsequent events may confirm its absence or moot any remaining controversy; an affirmed PTAB unpatentability determination has collateral-estoppel effect that eliminates any live controversy over enforcement of those claims in pending or co-pending actions.
IPR Institution
IGT v. Zynga: Decision not to apply interference estoppel as a bar to institution is nonappealable
The Federal Circuit held that the PTO's decision not to apply interference estoppel as a bar to institution is a nonappealable institution determination under 35 U.S.C. § 314(d), with no Cuozzo “shenanigans” exception on these facts. The court also rejected a procedural challenge that the Board relied on a new, unargued unpatentability theory, finding adequate notice and opportunity to respond under IPR due-process/APA principles.
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The court held that:
A contention that interference estoppel bars an IPR petition—and thus would require non-institution—constitutes a direct challenge to the institution decision and is generally unreviewable under 35 U.S.C. § 314(d), even when framed as a regulatory (not statutory) violation and even if discussed again in the final written decision.
No exception to § 314(d) applies where the agency provides facially sound, legally grounded reasons for declining to apply the asserted estoppel (including that a threshold standing termination mooted merits issues and that waiver authority could apply), so the record does not show a blatant or lawless departure from statutory/regulatory limits.
When an interference is terminated on a threshold issue depriving a party of standing and the merits motion is dismissed as moot, the PTO may reasonably read 37 C.F.R. § 41.127(a)(1) as not estopping later Office action on prior-art issues because such issues were not ones that could have been both raised and decided in the interference.
Estoppel, Time Bars, Jurisdiction
- Appl 23-1475.pdf
Whether a patent owner may invoke § 315(e)(1) estoppel on appeal based on new, fact-dependent real-party-in-interest/privy allegations.: Real-party-in-interest/privy status is a fact question that must be raised and developed before the Board; a patent owner forfeits a § 315(e)(1) estoppel theory by failing to present it to the PTAB in time for fact-finding.
- In re Gesture 25-1075.pdf
Whether § 315(e)(1) estoppel bars continuation of an already-instituted ex parte reexamination requested by an IPR petitioner or privy after a final written decision.: Section 315(e)(1) does not compel termination of an ongoing ex parte reexamination because, after institution, the requester does not “maintain” the reexamination; the PTO conducts and maintains it.
- Ingenico 23-1367.pdf
Meaning of “ground” in 35 U.S.C. § 315(e)(2) (IPR estoppel) and its scope in district court.: For § 315(e)(2), a “ground” refers to an invalidity theory of the type that could be raised in IPR—§ 102/§ 103 challenges based on patents and printed publications—so estoppel does not bar district-court invalidity assertions based on different § 102 grounds unavailable in IPR, such as public use, on sale, or known-or-used-by-others, even if patents/printed publications are used as evidence for those grounds.
Whether IPR estoppel barred reliance on printed-publication materials supporting a public-use/on-sale/known-or-used theory.: Printed publications that might have been used in IPR to assert a “described in a printed publication” ground are not, by that fact alone, estopped from being used as evidence to support a different, non-IPR ground (e.g., public use/on sale/known-or-used) asserted in district court.
Evidence, Burdens, and Standards
- Alivecor 23-1512.pdf
- Amp Plus 23-1997.pdf
Whether the Board (or the court) must locate support elsewhere in the petition to supply missing obviousness analysis for a limitation.: Although obviousness is not applied rigidly under KSR, the Board and reviewing court are not required to develop or supply a petitioner’s missing limitation-by-limitation obviousness analysis; the petitioner bears the burden to present the case in the petition and supporting evidence.
- Apple 23-1501.pdf
Whether the Board erred by refusing to consider petitioner’s expert testimony relevant to claim 4’s “fixed” limitation.: A party may elaborate on arguments previously raised in the petition; when expert testimony expands on and is tethered to an argument actually made (here, overlapping fields of view as the basis for “fixed”), the Board commits error by disregarding that material evidence as supposedly outside the petition.
- Centripetal 23-2027.pdf
- Dolby 23-2110.pdf
- Global Health 23-2009.pdf
Corroboration standard for inventor testimony and use of contemporaneous emails.: Under the rule-of-reason framework, contemporaneous documentary evidence such as authenticated emails (and server-generated metadata not authored by the inventor) can sufficiently corroborate an inventor’s conception narrative; the Board does not commit legal error by crediting such evidence absent a genuine authenticity challenge.
Burden shifting regarding respondent’s independent conception defense.: The Board does not improperly shift the burden when it requires the respondent to prove conception (as a basis for independent conception) and does not require the petitioner to disprove the respondent’s conception; arguments that the Board found mere “possession” rather than conception fail where the decision expressly finds conception on the record.
- Honeywell 23-1354.pdf
Whether substantial evidence supported the Board’s finding that a skilled artisan would not be motivated to swap two bits in the prior-art table to increase MSB protection.: Where the prior art expressly teaches a design goal (e.g., extra protection for a most-significant bit) and unrebutted expert testimony explains that the proposed modification would further that goal, a contrary Board finding of no motivation lacks substantial evidence.
- IBM 24-1170.pdf
Substantial-evidence support for finding the prior art taught “receiving … an identifier associated with the user” under the Board’s construction (uniquely identifies the user).: Substantial evidence supports a finding that a reference teaches receipt of a unique user identifier where the reference teaches transmitting “information regarding the user” to the recipient system and the Board reasonably infers that such transmitted user information includes the disclosed user ID, particularly when similar user information (e.g., passwords) is contemplated within that category.
Effect of a petitioner’s abandonment of an instituted anticipation ground on the Board’s disposition of that ground.: When the petitioner abandons an anticipation ground, the Board may conclude the petitioner failed to carry its burden on that ground without that conclusion precluding the Board from reaching a different merits outcome on separate instituted obviousness grounds applying the same claim construction.
- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]
Burden/standard for refusing registration as generic in ex parte examination and on appeal.: The examining attorney must establish a prima facie case of genericness, after which the applicant must come forward with rebuttal evidence; the Board, as a reviewing body, weighs the whole record and has no independent burden, and genericness is not subject to a clear-and-convincing evidence standard.
- Kroy IP 23-1359.pdf
Effect of differing burdens of proof on issue preclusion from IPR to district court.: When the second action applies a higher burden of proof on the same issue (clear and convincing invalidity in district court), prior determinations made under a lower burden (preponderance in IPR) fall within a well-recognized exception to collateral estoppel.
- Lashify 23-1245.pdf
- Lynk Labs 23-2346.pdf
- Merck 25-1210.pdf
Whether the Board improperly shifted the burden of persuasion on prior-art status in an IPR.: In an IPR, once petitioner makes an initial showing that a reference qualifies as prior art, the burden of production may shift to the patentee to come forward with evidence that the reference is not prior art, but the ultimate burden of persuasion remains with petitioner.
- Shockwave Medical 23-1864.pdf
AIA Merits: §§ 102, 103, 112
AMP Plus v. DMF: Appellant raised new grounds and presented inadequate analysis.
The Federal Circuit affirmed PTAB's opinion on remand that ELCO failed to show unpatentability of claim 22 because:
Where the petition’s obviousness mapping and the cited supporting evidence do not address an express claim requirement, substantial evidence supports the Board’s conclusion that the petitioner failed to prove unpatentability on that ground.
A new ground of unpatentability cannot be raised on appeal; where a litigant previously challenged a claim as obvious, they cannot now argue anticipation on appeal.
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Stated the Court:
Other Holdings:
- Ancora 23-1674.pdf
Whether substantial evidence supported the Board’s motivation-to-combine and mapping of the “verification structure” limitation in the Hellman/Chou obviousness combination.: Where the Board’s motivation-to-combine and limitation mapping are supported by credited expert testimony and the Board’s findings accurately reflect the theory advanced (e.g., storing license-related information in BIOS EEPROM), the prima facie obviousness determination is supported by substantial evidence.
- Appl 23-1475.pdf
Sufficiency of petition and proof for obviousness as to claims requiring a specific means-plus-function structure (claim 11) and a “cellular phone” limitation (claim 13).: In IPR, the petitioner bears the burden to present a clear, particularized mapping under its own proposed construction; when the petition provides no analysis showing how the prior art (with or without POSITA knowledge) meets the construed structure/limitation, the Board may find the claim not shown unpatentable.
- Apple 23-1501.pdf
Whether the Board’s obviousness determination for claims 1–3 and 5–7 lacked substantial evidence due to mapping and motivation-to-combine challenges.: Substantial evidence supported the Board’s mapping of Numazaki’s components to the claimed electro-optical sensor/digital camera and its finding of motivation to combine; the Board may discount unsupported, conclusory expert assertions and may rely on credited expert testimony explaining how combined teachings would be implemented.
- Bayer Pharma 23-2434.pdf
Effect of patentee’s argumentation on petitioner’s burden after correcting claim construction in an IPR.: In an IPR, the petitioner bears the burden of proving unpatentability under the correct claim construction throughout the proceeding; thus, where the Board applied an incorrect construction, the proper course is to remand for the Board to evaluate whether the petitioner meets its burden under the correct construction.
- Causam 24-1958.pdf
Effect of affirming claim construction on the Board’s obviousness determination when appellant’s merits challenge depends on construction.: Where the Board’s obviousness finding rests on a sound claim construction and the appellant presents no meaningful independent challenge to the obviousness analysis apart from that construction dispute, the unpatentability determination is affirmed.
- Global Health 23-2009.pdf
Elements and focus of an AIA derivation proceeding under 35 U.S.C. § 135(b).: To make a prima facie showing of derivation in an AIA derivation proceeding, the petitioner must produce evidence of (1) conception of the claimed invention and (2) communication of that conceived invention to the respondent before the respondent filed the earlier application; the proceeding must not be treated as a first-to-invent priority contest.
Whether actual reduction to practice is required to complete conception for this type of invention.: Conception generally does not require actual reduction to practice, and unpredictability alone does not impose a categorical requirement of simultaneous conception and reduction to practice; conception is complete when the inventor has a definite and permanent idea of the complete and operative invention, including by being able to define it by its method of preparation.
- HD Silicon 23-1397.pdf
- Honeywell 23-1354.pdf
- IBM 24-1170.pdf
Patentability of claim 5’s limitation requiring a request message from the second system to the first system upon determining insufficient user attributes to complete account creation.: A reference that teaches requesting missing account-creation information from the user (fourth system) does not, without more, disclose or render obvious a limitation requiring the second system to request the missing user-attribute information from the first system in response to an insufficiency determination during account creation.
- IGT 23-2262.pdf
- Kroy IP 23-1359.pdf
- Lynk Labs 23-2346.pdf
- Qualcomm 23-1208.pdf
Proper interpretation of § 311(b) regarding applicant-admitted prior art (AAPA).: Under the plain language of § 311(b), the “basis” of an IPR ground may include only prior art consisting of patents or printed publications; because AAPA is not itself such prior art, it cannot be included as the basis (or part of the basis) of a ground, even if combined with patents/printed publications.
Whether a petition’s express designation of “Basis” can establish a § 311(b) violation.: When an IPR petition expressly states that a ground’s “Basis” includes AAPA, the petitioner is held to that framing as master of its petition, and the ground violates § 311(b) because it includes non-patent/non-publication material in the basis.
- Restem 23-2054.pdf
- Shockwave Medical 23-1864.pdf
Substantial evidence supporting Board’s obviousness findings for claims 1–4 and 6–17.: The Board’s findings on what Levy teaches, motivation to combine Levy with a conventional over-the-wire catheter configuration, and the ultimate obviousness determination were supported by substantial evidence and are affirmed.
Obviousness of claim 5’s electrode placement limitation and Board’s obligation to consider combined teachings.: Obviousness must be assessed by considering the prior-art combination as a whole; the Board errs by focusing on whether a single reference alone discloses the limitation when the petitioner’s theory relies on combined teachings, and where the record shows a finite set of predictable design choices with unrebutted expert testimony, reversal (not vacatur) is appropriate if no substantial evidence supports the Board’s contrary finding.
AIA_PROCEDURE_DUE_PROCESS_APA
- Alivecor 23-1512.pdf
Whether alleged Board reliance on arguably irrelevant testimony warrants vacatur under the APA.: Even if an evidentiary reference is arguably irrelevant, reversal/vacatur is unwarranted absent a showing of prejudicial error; a passing citation that is not relied upon for the dispositive obviousness determination is harmless when other substantial evidence independently supports the finding.
- Amp Plus 23-1997.pdf
- Appl 23-1475.pdf
- CQV 23-1027.pdf
APA requirement that the PTAB consider the whole record and explain its reasoning.: The Board must consider the entirety of the record and articulate a rational connection between the facts found and the result; when the Board omits discussion of highly material, unrebutted evidence central to a dispositive issue, a reviewing court may vacate and remand because it cannot reasonably discern that the Board followed a proper path.
- Causam 24-1958.pdf
Ability of a litigant to assert due-process notice rights of an alleged true patent owner not participating in the IPR.: A party generally may not assert the constitutional due-process rights of a third party; absent a qualifying close relationship and aligned interests, a patent owner asserting it is the sole owner cannot press a due-process notice claim on behalf of an alleged different owner.
- Centripetal 23-2027.pdf
Timeliness/forfeiture of an APJ-recusal motion based on an alleged conflict discovered during the proceeding.: The Board may deny a recusal/vacatur request as untimely where the movant knew of the asserted disqualifying facts for months yet waited while pursuing other relief; equity and fairness considerations support refusing to “start over” after significant procedural events have occurred.
Which executive-branch ethics regulations govern an APJ’s own de minimis stock ownership and whether appearance-based relationship rules apply to the employee’s own holdings.: For an employee’s own publicly traded securities, the de minimis exemption framework in 5 C.F.R. §§ 2635.402(d) and 2640.202 governs; 5 C.F.R. §§ 2635.501–.502 (appearance/personal-relationship provisions) do not apply to the employee’s own holdings and cannot be used to impose additional recusal obligations beyond the applicable exemption.
Whether alleged recusal error at institution/joinder requires vacatur of the final written decision.: Even if recusal were required, vacatur is not automatic; applying the Liljeberg factors, relief may be denied absent demonstrated prejudice, meaningful risk of injustice in other cases, or substantial risk to public confidence, particularly where the merits decision was issued by a fully disinterested panel.
- Honeywell 23-1354.pdf
Whether the Board’s reasoning deviated from the invalidity theory advanced in the petition.: The Board commits legal error by relying on reasoning that effectively shifts away from the petition’s theory (here, obviousness based on modifying a reference) and by giving weight to considerations that would only matter if the petition were asserting anticipation instead.
- IBM 24-1170.pdf
Appellate reviewability of petition-scope challenges in view of 35 U.S.C. § 314(d).: Section 314(d) does not bar review of a contention that the Board’s final written decision exceeded the petition’s articulated grounds/arguments; such a challenge seeks compliance with statutory limits on the proceeding rather than reversal of the institution decision.
Whether the Board improperly relied on an unpetitioned “obviousness-like” theory to satisfy a claim limitation.: The Board does not depart from a petition’s anticipation-style theory merely by crediting expert evidence and skilled-artisan understanding to interpret what a reference’s express disclosure would convey (including conventional, inherent, or necessarily implied aspects), so long as the Board does not modify the reference to supply a missing limitation.
- IGT 23-2262.pdf
Whether the Board adopted an impermissible new theory without notice (APA/due process) in its obviousness analysis: The Board does not commit reversible procedural error by citing additional portions of the same prior-art reference in responding to arguments raised by the patent owner, so long as the “thrust” of the instituted unpatentability ground remains the same and the patent owner had notice and an opportunity to respond.
- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]
Whether the PTO may defend the Board’s descriptiveness ruling on a different theory that the Board did not adopt (that the mark indicates a café serves “a variety of teas”).: Under APA notice-and-opportunity principles, the agency may not change theories on appeal by advancing a new rationale not adopted by the Board and not presented as the basis for the decision under review.
- In re Riggs 22-1945.pdf
- Merck 25-1210.pdf
Whether the PTAB violated the APA by applying the complete-identity inventive-entity rule without additional opportunity for evidence/argument.: No APA violation occurs where controlling precedent provides notice of the governing “by another” standard; to the extent the MPEP suggests otherwise, it does not override precedent or create entitlement to a remand for additional evidence.
- Odyssey Logistics 23-2077.pdf
- Qualcomm 23-1208.pdf
- Sage Products 23-1603.pdf
Procedural challenge that the Board adopted arguments/grounds not advanced in the petition and improperly relied on evidence beyond the reference.: The Board has discretion to determine what grounds and arguments a petition presents and may address disputed limitations (and responsive reply evidence/argument) without creating a new ground, and reliance on non-dispositive extra materials is harmless absent prejudice.
- Shockwave Medical 23-1864.pdf
Whether reliance on applicant-admitted prior art (AAPA) violates 35 U.S.C. § 311(b) in an IPR petition and final decision.: Section 311(b) requires that the grounds for unpatentability be based on patents or printed publications, but AAPA may be used as evidence of a skilled artisan’s general background knowledge (including to supply a missing limitation or motivation) so long as the petition does not make AAPA part of the “basis” of the ground.