Patent Invalidation Procedures

Detailed Reasoning and Analysis of the Judge: The Hon'ble Court reasoned that the patented method was not a new manufacture or a significant improvement over existing methods. The technique of holding an article with a pressure spindle was already known in the industry. The alleged invention was merely an adaptation of existing technology, amounting to a workshop improvement rather than an inventive step. The failure of the patentee to provide evidence of research, experimentation, or innovation further weakened the claim of novelty. The High Court’s Division Bench erred in reversing the Single Judge’s decision, as it overlooked the fundamental principle that patents must demonstrate both novelty and an inventive step. Final Decision: The Supreme Court allowed the appeals, set aside the judgment of the Division Bench, and restored the judgment of the Single Judge. The patent was held invalid and revoked. The Court also denied damages to the respondent and ruled that each party would bear its own costs. Law Settled in This Case: The Court clarified that a valid patent requires both novelty and an inventive step. Mere workshop improvements are not patentable. The grant of a patent does not guarantee its validity, and it can be challenged in court. Prior public knowledge or usage of an alleged invention negates its novelty. The burden of proving novelty and an inventive step lies on the patentee. The absence of experimental research or new principles of operation undermines a claim of invention. Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation. Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

The Federal Circuit has issued two significant decisions - Kroy IP Holdings v. Groupon (Feb 2025) and ParkerVision v. Qualcomm (Sept 2024) - that clarify the limits of inter partes review (IPR) estoppel. These decisions emphasize a critical distinction based on the different burdens of proof between IPR proceedings and district court litigation. The also explain some stray language in XY v. Trans Ova that created confusion. The key takeaway: IPR unpatentability findings cannot create collateral estoppel for claims in district court - except for the particular claims cancelled. This is true even if those later challenged claims are materially the same for invalidity purposes. So, we have a formalist rule here. In B&B Hardware, the Supreme Court held that administrative judgments could have issue preclusive effect. But, here the court found that the preclusion does not apply because IPRs use a preponderance of evidence standard, while district courts require clear and convincing evidence of invalidity. Consider the practical impact: Patent owners who have some claims cancelled in IPR can still assert materially similar unchallenged claims in district court. Once again, it pays to have lots of claims. https://lnkd.in/gmD6cNRz

USPTO now provides an expected PTAB Notice of Proposed Rulemaking on Oct. 16, 2025. The proposed Rule 42.108 (Institution of IPR) is on pg. 22 of 24 in the document below. The strategic option Overlap (Fintiv factor 4) - 108(d): IPRs "shall not be instituted or maintained unless each petitioner files a stipulation with the Board and any other tribunal where it is litigating or later litigates regarding the challenged patent, stating that if a trial is instituted," the petitioner and any RPI will not raise 102 or 103 invalidity or unpatentability grounds. Adjudicated Before - 108(e): IPRs "shall not be instituted or maintained if a challenged claim or an independent claim from which a challenged claim depends" was found not invalid by a D.Ct. trial, D.Ct. summary judgment, the ITC (initial or final determination); not unpatentable by PTAB; patentable by Ex Parte Reexam; or unpatentable or invalid by Fed. Cir. Proximity - 108(f): IPRs "shall not be instituted or maintained if, more likely than not," a D.Ct. trial, ITC initial or final determination, or PTAB final written decision will occur before the petitioner's final written decision will issue. Other - 108(g): If a panel thinks institution is warranted despite these, they are referred to the Director. "Unusual and extraordinary circumstances shall not include new or additional prior art, new expert testimony, new caselaw (except as provided above) or new legal argument, or a prior challenger’s failure to appeal. Frivolous or abusive petitions under this paragraph may be appropriately sanctioned, including with an award of attorneys’ fees." Most of this can be found in Acting Director Coke Morgan Stewart's March 26, 2025 Memo and former PTAB Chief Judge Scott Boalick Memo issued two days earlier. Those memos defined and clarified the USPTO’s discretionary denial analysis under 35 U.S.C. §§ 314(a), 325(d) and precedential PTAB decisions including General Plastic, Advanced Bionics, Fintiv, and Sotera, as well as the PTAB’s Trial Practice Guides. PTAB Handbook #PTAB #Patents #Patentlitigation

𝗧𝗵𝗲 𝗔𝗹𝗶𝗰𝗲 𝗔𝗱𝘃𝗮𝗻𝘁𝗮𝗴𝗲: 𝗜𝗻𝘃𝗮𝗹𝗶𝗱𝗮𝘁𝗶𝗻𝗴 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 The U.S. Supreme Court's 2014 decision in 𝘈𝘭𝘪𝘤𝘦 𝘷. 𝘊𝘓𝘚 𝘉𝘢𝘯𝘬 fundamentally changed the landscape for software patents. Although this change has made it more challenging to obtain and enforce software patents, it has created significant opportunities for companies accused of infringement. The 𝘈𝘭𝘪𝘤𝘦 decision's impact is particularly strong for: • 𝗣𝗿𝗲-𝟮𝟬𝟭𝟰 𝗦𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗣𝗮𝘁𝗲𝗻𝘁𝘀. Many software patents granted before 𝘈𝘭𝘪𝘤𝘦 are vulnerable to invalidation because they were examined under more lenient standards. • 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 𝗖𝗹𝗮𝗶𝗺𝗶𝗻𝗴 𝗔𝗯𝘀𝘁𝗿𝗮𝗰𝘁 𝗜𝗱𝗲𝗮𝘀. Patents that claim business methods or data processing without sufficient technical implementation details are particularly at risk. • 𝗣𝗮𝘁𝗲𝗻𝘁𝘀 𝗟𝗮𝗰𝗸𝗶𝗻𝗴 𝗧𝗲𝗰𝗵𝗻𝗶𝗰𝗮𝗹 𝗗𝗲𝘁𝗮𝗶𝗹𝘀. Patents that describe their inventions primarily in functional terms, without explaining how the claimed functions are achieved technically, are vulnerable. As someone who both defends against software patents and helps clients obtain them, I see both sides of the 𝘈𝘭𝘪𝘤𝘦 equation. When writing new software patents, I carefully craft them to withstand 𝘈𝘭𝘪𝘤𝘦 challenges. However, many existing software patents, particularly those granted before 2014, weren't drafted with these requirements in mind. This creates significant opportunities for defendants. In my experience defending against software patent assertions: • Many software patents can be invalidated quickly and cost-effectively using 𝘈𝘭𝘪𝘤𝘦-based arguments • Even the threat of an 𝘈𝘭𝘪𝘤𝘦 challenge often motivates patent owners to settle on favorable terms • Courts are receptive to 𝘈𝘭𝘪𝘤𝘦-based challenges early in litigation However, crafting successful 𝘈𝘭𝘪𝘤𝘦-based invalidity arguments requires deep understanding of both the evolving law of patent eligibility and the technical aspects of software patents. As with the other defensive strategies I've discussed in this series, it's critical to work with qualified patent counsel who has specific expertise in software patents. In my next post, I'll explain how attorney-client privilege affects your patent defense strategy and why it's so important to preserve. #patents #intellectualproperty #softwarepatents

The USPTO just gave patent owners a new shield. [My original post got it backwards.] What actually changed: Effective April 5, 2026, the USPTO introduced a pre-order procedure in ex parte reexamination — but the new 30-page, no-fee filing belongs to the patent owner, not the challenger. When a third party files a reexam request (still with the standard fee), the owner can now submit up to 30 pages arguing the request raises no Substantial New Question of patentability, before the Director decides whether to order reexam. Any reply from the requester is exceptional, capped at 10 pages, and not free. Why it matters: This tilts the front end of ex parte reexam toward owners. With IPR denials climbing and challengers eyeing reexam as an alternative, owners now have a structured, low-cost chance to kill weak requests at the gate — before a reexam ever opens. What owners should do now: Pre-build SNQ rebuttal packages for your highest-value patents. Map the prior art a sophisticated challenger would actually cite. And document, claim by claim, why the examiner allowed each limitation — that record is the spine of a 30-page response. If you're a challenger, your reexam threshold just got higher. CORRECTION: An earlier version of this post described the new pre-order procedure as a tool for patent challengers, framing it as a cheaper, fee-free path to attack granted patents. That was wrong. The 30-page no-fee filing is reserved for patent owners to argue against ordering reexam after a third party files a request. Challengers still file the ordinary request with the ordinary fee, and any pre-order reply by the requester is exceptional, 10 pages, and not free. Thanks to Jim Greer, Angela Morris and Aoife Elizabeth Butler, Esq. and others for flagging the error. Source: USPTO Official Gazette notice, April 2026. https://lnkd.in/dmQW3d7u

Forget the 20-year patent clock. In the pharmaceutical sector, the true term of market exclusivity—and the billions of dollars it represents—is being decided not in federal courtrooms, but behind the closed doors of the Patent Trial and Appeal Board (PTAB). For companies who have invested upward of $4.5 billion and a decade of R&D, the economic bedrock of their enterprise can now be wiped out in a 12-month administrative review. This is the central reality of the modern drug economy: the collision of two worlds. The introduction of the PTAB in 2011 accidentally superimposed a fast-track, low-burden-of-proof administrative mechanism onto the carefully balanced, specialized ecosystem of the Hatch-Waxman Act. This mismatch has created a dual-track system for patent defense and challenge, fundamentally rewriting the competitive calculus. The primary battlefield is no longer the core compound patent—often scientifically robust and difficult to invalidate—but the patent thicket. These are the secondary patents covering formulations, methods of use, and dosage regimens that innovators build to extend their effective market life, which averages a mere 7 to 10 years. Generic and biosimilar challengers have embraced the PTAB's strategic advantages: a lower burden of proof ("preponderance of the evidence") and technically expert judges who are highly effective at systematically dismantling these incremental protections. Crucially, the financial risk profile is not uniform. Data analysis reveals a sharp, critical divergence in outcomes that must drive strategy. While Orange Book-listed small-molecule patents show relatively balanced outcomes after PTAB institution, patents protecting complex biologics—which often cover manufacturing processes more susceptible to obviousness challenges—are invalidated at a staggering 70% rate in final written decisions. This reality justifies an aggressive, high-investment Inter Partes Review (IPR) strategy for biosimilar manufacturers, as the probability of a decisive victory post-institution is significantly higher. For the generic first-filer, timing is everything. The decision to leverage the PTAB is a classic high-stakes dilemma. Winning an IPR clears the patent path swiftly, but risks destroying the value of the highly coveted 180-day first-filer exclusivity by clearing the patent for all competitors simultaneously. Losing, meanwhile, triggers estoppel, limiting the arguments that can be made in parallel district court litigation. For innovators, the defense must now be synchronized. Success demands a proactive, data-driven approach, assessing every secondary patent for its specific vulnerability to PTAB scrutiny. This is no longer a legal footnote; it is a core business strategy that determines winners and losers. #DrugPatents #PTAB #GenericDrugs https://lnkd.in/eAekWFbA

For those that follow my fights, fears and travails, I thought you’d want to know about a major shift at the United States Patent and Trademark Office (USPTO) that could reshape how patent‑validity fights play out. On October 17, 2025 the USPTO published a Notice of Proposed Rulemaking (NPRM) aimed at significantly restricting the availability of Inter Partes Review (IPR) institution under America Invents Act (AIA) proceedings — a package widely dubbed “one‑and‑done” because it would dramatically limit serial or repeat challenges and shift more validity disputes back into traditional court or ITC settings. What’s changing A petitioner must now stipulate that if an IPR is instituted, they will not raise any 35 U.S.C. §§ 102 (novelty) or 103 (obviousness) challenges in any other forum. The USPTO will refuse to institute (or will maintain denial) of an IPR if the challenged claim — or any claim from which it depends — has already been found not invalid in a previous proceeding (district court, ITC, ex‑parte reexam, or prior PTAB decision) under §§ 102/103. The USPTO will also decline institution if another proceeding (district court trial, ITC determination, or PTAB written decision) is likely to resolve the same claim before the IPR final decision date (‘parallel proceeding’ scenario). However, the rule includes a carve‑out: if a PTAB panel finds “extraordinary circumstances,” the Director may still institute an IPR despite the above bars. Concurrently, the USPTO withdrew a prior NPRM (April 19 2024) and signalled that the Director (rather than the previous bifurcated panel system) will personally oversee institution decisions from October 20 2025. Why it matters This change dramatically raises the strategic stakes for challengers: you’d have to commit to one venue for §§ 102/103 invalidity challenges, undercutting the “spend first, pick best forum later” playbook many used. It also gives stronger leverage to patent owners whose patents have already stood up in court or at the PTAB. Several commentators say this marks a turning point in the balance between patent challengers and patent owners. Timing & comment period The NPRM was published on October 17, 2025 in the Federal Register. The comment period is open until November 17, 2025.

The Federal Circuit’s recent precedential decision in In re Gesture Technology Partners is a significant wake-up call for patent owners and IP strategists relying on the finality of Inter Partes Review (IPR). By adopting a narrow interpretation of AIA estoppel, the court confirmed that challengers can effectively use parallel ex parte reexamination as a "back door" to invalidate claims that survive IPR, even on grounds that could have been raised earlier. Furthermore, the decision reiterates that even expired patents remain vulnerable to late-stage USPTO challenge so long as claims for past damages keep the controversy alive. My latest article provides a detailed analysis of the court’s reasoning on estoppel and jurisdiction, outlining why this ruling complicates the path to truly "settled" patent rights and offering practical takeaways for counsel navigating multi-front validity disputes. #Patents #FederalCircuit #CAFC #PatentLitigation #IPR #PTAB #XPR #EPR #USPTO