Intellectual Property Research: Patent Law

On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just released a set of FAQs addressing questions about the memo.

The March 26 Memorandum (Memo) introduced a bifurcated framework for institution decisions that separates discretionary considerations from the substantive merits of a petition. This change is intended to streamline decision-making at the Patent Trial and Appeal Board (PTAB) while giving parties a formal opportunity to address discretionary denial factors directly to the Director. 

Under the Memo, institution decisions are bifurcated into two phases. First, the Director, in consultation with at least three senior PTAB judges, evaluates whether institution should be denied based on discretionary grounds—such as those outlined in the Fintiv and General Plastic line of cases. If the Director determines that discretionary denial is not warranted, the matter proceeds to a PTAB panel, which evaluates the merits and other non-discretionary issues raised in the petition and preliminary response. This structure allows for early resolution of threshold issues while preserving the Board’s focus on statutory and evidentiary matters.

Timing is Everything

The bifurcated process applies to proceedings where the patent owner’s preliminary response deadline occurs after March 26, 2025. Patent owners who wish to argue for discretionary denial must file a separate discretionary denial brief within two months of the PTAB’s Notice of Filing Date Accorded. Petitioners may file a corresponding opposition one month later—on the same day the patent owner’s preliminary response is due. If no discretionary denial brief is filed, the case bypasses the Director and goes directly to a Board panel for a merits-based institution decision. The Director, after considering the petition, discretionary denial brief, opposition brief, and preliminary response (POPR), will issue a decision on discretionary considerations within 1 month of the last relevant paper filed.

There are a few important points on timing clarified by the FAQs. First, while parties may always submit early briefing, the parties may not stipulate to later due dates for filing the discretionary considerations briefing. Earlier filing of a discretionary denial brief does not alter timing for the petitioner’s opposition, which remains one month from the due date of patent owner’s brief, or of the Director’s decision. Second, if the patent owner filed its POPR, or the deadline for filing a POPR passed, on or before the Memo issued on March 26, 2025, the bifurcated process is not available, and a Board panel will proceed as it would have before the Process Memorandum issued.

Speak Now or Forever Hold Your Peace (Mostly)

If the patent owner fails to timely file a discretionary denial brief, the Director will not issue a decision on discretionary considerations. Instead, the case proceeds to directly to phase 2 for consideration of non-discretionary issues by the Board panel. 

Importantly, the Office emphasizes a strict separation of issues between the two phases. Once the Director determines that discretionary denial is not appropriate, the Board panel will not consider papers filed by parties relating to discretionary considerations. Arguments related to discretionary denial must be confined to the discretionary denial brief and corresponding opposition. The FAQs make it clear that neither the Director nor the Board panel will consider discretionary-denial arguments raised in the POPR. 

Conversely, merits-based arguments may only appear in the petition, preliminary response, and any authorized replies or sur-replies. The Board will not consider arguments that appear in the wrong phase of briefing, absent extraordinary circumstances. But if the petition fails to present sufficient challenges that meet the reasonable likelihood standard, the Board panel may address discretionary considerations in phase 2.

Here’s the exception, because the strengths/weaknesses of the merits are relevant, the parties may reference arguments in the petition and evidence of record. The parties’ discretionary briefing may also address claim construction if it is relevant to the discretionary considerations.

Yes Do-Overs!

Finally, the FAQs clarify how rehearing and Director Review will operate under the new system. Requests for rehearing on discretionary denials must be directed to the Director, while rehearing requests involving only the merits or other non-discretionary issues must be directed to the Board panel. When a request raises both discretionary and non-discretionary issues, the party must file a request for Director Review. For institution denials based on discretion, the party has 30 days to request rehearing or Director Review. 

In sum, the USPTO’s interim guidance establishes a more structured approach to addressing discretionary-denial considerations at the PTAB. The bifurcated process gives patent owners a dedicated opportunity to present threshold arguments directly to the Director while allowing the Board to focus on merits once those threshold issues are resolved. Practitioners are advised to pay close attention to timing, briefing format, and the scope of issues raised to ensure compliance with the new requirements. The USPTO signaled that these FAQs may evolve with practice, so parties should continue to monitor for updates.

For further details, patent professionals are encouraged to review the Memorandum and FAQs and consider their influence your current and future IPR, PGR and/or litigation strategies and tactics.

The Federal Circuit vacated and remanded the district court’s summary judgement of noninfringement, finding that the lower court had improperly construed the claim term “pull cord.” The district court had erroneously limited the term to a directly pulled cord that lacks a handle. The Federal Circuit determined that these restrictions were unsupported by the intrinsic evidence and directed the district court to apply the correct claim construction in accordance with the Federal Circuit’s guidance and redetermine infringement using the correct claim construction.

Case Background

IQRIS Technologies LLC sued Point Blank Enterprises, Inc. and National Molding, Inc. in the Southern District of Florida, alleging infringement of U.S. Patent Nos. 7,814,567 and 8,256,020. These two patents share a common specification and are both directed to quick release systems on tactical vests, designed to allow soldiers and first responders to quickly remove their vests in emergency situations. According to the patent specifications, removal and reassembling of prior art tactical vests are time-consuming, and the asserted patents overcome these problems by providing a protective garment with “a reduction in operating parts, faster release, and quicker reassembly than the systems currently in use.”

The accused products – Point Blank’s tactical vests equipped with National Molding’s “Quad Release” and “Evil Twin” quick-release systems – use Bowden cables, which consist of a wire inside a sheath, to activate the trigger, which in turn disengage the vest by releasing the buckles.

During the litigation, the parties disputed the meaning of the team “pull cord” in the asserted claims. IQRIS argued the term should be construed as “a component which, when put into tension, can result in activating the releasable fastener,” while the defendants proposed construing the term as “a cord on the exterior of the ballistic garment grasped by a user that is capable of disengaging the releasable fastener or releasable hook when a user pulls on the pull cord.” The parties also disputed the location of the pull cord, but the district court did not address this issue, and instead construed the term to mean “cord that can be directly pulled by a user to disengage a releasable fastener or releasable hook.” The district court further decided that the patents “disparage” prior art systems that include “a handle that is attached to the cables[.]” Therefore, when analyzing infringement under the doctrine of equivalents, the district court interpreted “pull cord” to exclude pull cords that include a handle. Based on its construction of “pull cord”, the district court granted summary judgement of noninfringement, holding the accused products lacked a claimed “pull cord.”

Issues

The primary issue on appeal was whether the district court had erred in construing “pull cord” to (1) require a user to pull on the pull cord directly; and (2) exclude cords that include a handle.

Holding and Reasoning

1. Directly pulled

The Federal Circuit held that the district court erred in its construction of “pull cord” by imposing requirements that neither the claim language nor the specification supported. The court found that nothing in the claim explicitly required the pull cord to be directly pulled by a user. The claims merely suggest a “pull cord” is a cord that actuates a releasable hook when pulled, without specifying who or what pulls the cord, or whether the pulling is direct or indirect.

While the preferred embodiment depicted a pull cord that is directly pulled, Federal Circuit precedent instructed that limitations from specifications should not be imported into claims when the claims do not expressly require them.

2. Excluding a handle

The court also rejected the district court’s construction that a pull cord cannot include a handle. The patent figures depict a circular ball at the end of the pull cord, which suggests that the inventors contemplated cords with handles. Further, while the patent specification criticizes prior-art cutaway vests for requiring a time-consuming reassembly process, it does not disparage the use of handles. The district court had incorrectly inferred that the pull cord should exclude handles because the specification did not clearly disavow such claim scope where the pull cord includes handles.

Because the district court’s summary judgement was based on an erroneous claim construction, the Federal Circuit vacated the ruling. The court declined to decide whether the accused products infringe under the correct construction, and remanded for future proceedings.

We are excited to present the second edition of Sheppard Mullin’s “Year in Review” report, which provides a comprehensive summary of the key precedential Federal Circuit decisions related to patent law in 2024. Building on the success of our inaugural report covering 2023, we continue our commitment to keeping you informed with detailed analyses.

Click here to read more.

This Federal Circuit Opinion[1] analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness. 

Background

Gesture Technology Partners, LLC is the owner of U.S. Patent No. 7,933,431 (“the ’431 patent”), which generally claims a method for controlling a device based on a user’s gestures. In February 2021, Gesture filed a patent infringement lawsuit against Apple Inc., LG Electronics Inc., Google LLC, and others regarding the ’431 patent.

On May 14, 2021, Unified Patents, LLC, a multi-member organization of which Apple is a member, filed an Inter Partes Review petition against the ’431 patent, challenging a subset of the claims. On May 21, 2021, Apple, LG, and Google separately filed IPR petitions, which were eventually joined, challenging the patentability of all claims of the ’431 patent. Both the Unified IPR and Apple IPR relied on U.S. Patent No. 6,144,366 (“Numazaki”) as prior art, arguing the ’431 patent was obvious under 35 U.S.C. § 103 when combined with the knowledge of a person of ordinary skill in the art and/or at least one other prior art reference.

On November 21, 2022, based on the Unified IPR, the Board held claims 7-9 and 12 were unpatentable and claims 10, 11, and 13 were not unpatentable. On November 30, 2022, based on the Apple IPR, the Board held claims 1, 7, 12, and 14 were unpatentable and claims 11 and 13 were not unpatentable. Apple appealed, and Gesture cross appealed, the Apple IPR holdings.

35 U.S.C. § 315(e)(1) on estoppel states, “[t]he petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . , or the real party in interest or privy of the petitioner, may not . . . maintain a proceeding before the [Patent] Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Gesture contended that Apple lacked standing to appeal because Apple was a real party in interest in the Unified IPR, which was decided before the Apple IPR. Accordingly, Gesture argued Apple was estopped and had no standing to appeal the final written decision issued in the Unified IPR. However, Gesture, despite knowing this fact for more than a year before the final written decision in the Unified IPR, did not raise the argument that Apple was a real party in interest in the Unified IPR proceeding during the Apple IPR proceeding.

With regard to claims 11 and 13, Apple’s claim construction, which the Board adopted, defined the claimed function “means for transmitting information,” in claim 11, as “at least a wireless cellular transceiver.” The Board found claims 11 and 13 were not unpatentable because Apple’s IPR petition lacked an explanation of how the “transmission unit” in Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, equates to the defined “wireless cellular transceiver” or a cell phone described in claim 13. Apple appealed this finding, arguing the Board applied the wrong legal standard for obviousness by considering only the explicit disclosure of Numazaki, and not considering the prior art in view of the knowledge of a person of ordinary skill in the art.

Finally, Gesture filed a cross-appeal, arguing that substantial evidence contradicted the Board’s invalidity decision. Gesture highlighted several terms it believed the Board failed to analyze correctly, particularly arguing that certain elements were not expressly disclosed in the prior art.

Issue(s)

1. Did Apple have standing to appeal given the estoppel provision of 35 U.S.C. § 315(e)(1) and the previously decided Unified IPR?
2. Did the Board apply the correct legal standard for obviousness and ignore Apple’s arguments in holding that Apple did not show claims 11 and 13 were unpatentable?
3. Did the Board err by finding a claim obvious even though certain elements were not expressly disclosed in the prior art?

Holding(s)

1. Gesture waived the argument that Apple lacked standing by not presenting it before the Board.
2. The Board applied the correct legal standard for obviousness and properly considered Apple’s arguments, including not only the explicit disclosure in Numazaki but also how a person of ordinary skill in the art would have understood the disclosure, and thus correctly found that claims 11 and 13 were not shown to be unpatentable .
3. The Board correctly found a claim to be obvious despite certain elements not being expressly disclosed in the prior art.

Reasoning

Whether Apple Was Statutory Estopped Under 35 U.S.C. Sec. 315(e)(1)

The Federal Circuit reiterated that an appellate court may not decide questions of fact in the first instance on appeal. This principle also applies to factual questions regarding the real party in interest. The Federal Circuit cited Acoustic Technology Inc. v. Itron Networked Sols., Inc., 949 F.3d 1360 (Fed. Cir. 2020), a similar case involving statutory estoppel under 35 U.S.C. § 315(b). In that case, the estoppel argument was unavailable because the patent owner did not make the common real party in interest argument to the Board, and thus waived the argument for purposes of appeal. The Federal Circuit held that the same outcome applies here, even though the estoppel here was based on a previous IPR decision, which occurred nine days earlier. The Federal Circuit held that the fact regarding the real party in interest was disclosed in the Unified Patents IPR more than a year before the final written decision. Accordingly, the court held that Gesture should have presented this argument to the Board during the IPR proceeding. 

The Board Applied The Correct Legal Standard

The Federal Circuit found the Board correctly analyzed Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, and properly considered Apple’s evidence. The Federal Circuit held it is the petitioner’s burden to present a clear argument in the petition. The Board found, and the Federal Circuit agreed, that Apple failed to explain the evidence “with particularity” in the petition because the petition did not explain how the “transmission unit” in Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, equates to the defined “wireless cellular transceiver” or a cell phone. The Federal Circuit found the Board did not ignore Apple’s assertion regarding Numazaki in view of the knowledge of a person of ordinary skill in the art, but rather agreed with Gesture that Apple’s explanation was lacking. Accordingly, the Board applied the correct legal standard and correctly held claims 11 and 13 are not unpatentable. 

Whether Elements Must Be Expressly Disclosed In The Prior Art

The Federal Circuit also addressed Gesture’s argument that claim elements need to be expressly disclosed in the prior art. The Federal Circuit relied on KSR Int’l Co. v. Teleflex Inc., where the Supreme Court held that express disclosures are not required to render a claim obvious. 550 U.S. 398, 418 (2007). The Federal Circuit further specified that Numazaki’s silence on how the claimed elements were implemented is irrelevant because, “in general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.” Accordingly, Gesture’s argument that Numazaki did not expressly disclose certain elements of the ’431 patent carried no weight. 

FOOTNOTES

[1] Apple Inc. v. Gesture Technology Partners, LLC, No. 2023-1475, 2023-1533, pending cite (Fed. Cir. March 4, 2025)

AliveCor, Inc. v. Apple, Inc., No. 23-1512 (Fed. Cir. 2025) – On March 7, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review (“IPR”) decisions invalidating all claims of three AliveCor patents. Previously, the International Trade Commission (“ITC”) had found certain Apple Watch products infringe two of the three patents. 

Background

AliveCor is a technology company that develops “AI-enabled, machine learning-powered ECG sensors” compatible with consumer mobile devices for remote heart rhythm monitoring. AliveCor owns the three patents at issue, U.S. Patent Nos. 9,572,499 (“the ’499 patent”), 10,595,731 (“the ’731 patent”), and 10,638,941 (“the ’941 patent,” together with the ’499 and ’731 patents, the “challenged patents”). The patents relate to machine learning in the determination of arrythmia, which is a heartbeat irregularity threatening hundreds and thousands of lives.

In April 2021, AliveCor accused Apple of selling and importing Apple watches infringing the challenged patents in the ITC. See Certain Wearable Electronic Devices, Inv. No. 337-TA-1266. Two months later, Apple filed IPR petitions challenging validity of all claims of the three patents. The Board instituted the IPRs in December 2021. As a result, AliveCor and Apple had been litigating the challenged patents’ validity in parallel before the ITC and the Board, with the ITC case leading slightly in time. 

During discovery in the ITC case, Apple produced some non-public documents that AliveCor believes demonstrate secondary considerations of non-obviousness. Shortly after the Board’s institution of the IPRs, AliveCor’s counsel reached out to Apple’s counsel to negotiate discovery regarding the Apple documents for purposes of the IPR. Apple rejected AliveCor’s request as a violation of the protective order entered in the ITC case. None of the parties apprised the Board of the issue. Nor did AliveCor ask the ITC for cross use permission. 

The ITC administrative law judge’s (“ALJ”) Initial Decision relied on some of the secondary considerations documents Apple produced, to reject Apple’s obviousness contentions and uphold the validity of certain asserted claims from the challenged patents. About three months after the ALJ’s Initial Decision had become publicly available, the Board held its consolidated IPR hearings. Subsequently, the Board found all claims of the challenged patents invalid as obvious. AliveCor appealed.

Issue

AliveCor raised three issues on appeal. The first two issues concern the Board’s finding of obviousness over two key claim limitations. The third concerns whether Apple violated its discovery obligations by failing to produce the non-public documents relating to secondary considerations in the IPRs.

Holdings and Reasoning

Regarding the first two issues, the Federal Circuit reviewed the Board’s obviousness analysis and concluded that substantial evidence supported the Board’s findings.

Regarding the third issue, the Federal Circuit refused to delve deeply into the discovery obligations an IPR litigant bears or to address the merits of AliveCor’s argument, because AliveCor had forfeited the argument by failing to raise it with the Board. The Federal Circuit stressed that to preserve an issue for appeal, parties must timely raise it with the tribunal. In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“[A] position not presented in the tribunal under review will not be considered on appeal in the absence of exceptional circumstances.”). The Federal Circuit noted that AliveCor raised its discovery violation argument for the first time on appeal. As AliveCor’s counsel admitted, AliveCor never expressed to the Board its position that Apple’s was obligated to produce the secondary consideration documents. While AliveCor sought to excuse its choice not to raise the discovery issue by pointing to Apple’s rejection of AliveCor’s discovery request, the Federal Circuit found that Apple’s posture did not relive AliveCor of its obligation to present its concerns to the Board or seek relief from the Board. The Federal Circuit also refused to find exceptional circumstances here because AliveCor never told the Board of the purported discovery violation, asked the Board to allow AliveCor to introduce the evidence form the ITC in the IPR, or directed the Board to the publicly available Initial Decision.