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The U.S. Patent and Trademark Office Director has granted Director Review and vacated the Patent Trial and Appeal Board’s decisions to institute two separate inter partes review (IPR) proceedings challenging the same patent claims in a dispute between CrowdStrike, Inc. and GoSecure, Inc.

Background of the Dispute

The case involves two IPR proceedings (IPR2025-00068 and IPR2025-00070) filed by CrowdStrike challenging Patent 9,954,872 B2 owned by GoSecure. CrowdStrike filed separate petitions primarily to present two different interpretations of the claim term “association,” a broader construction and a narrower construction.

The Director’s Ruling

Acting Under Secretary Coke Morgan Stewart determined that the Board abused its discretion by instituting both proceedings. The Director emphasized that “one petition should be sufficient to challenge the claims of a patent in most situations” and “multiple petitions by a petitioner are not necessary in the vast majority of cases,” citing the Board’s Consolidated Trial Practice Guide. The Director found that allowing multiple petitions for different claim constructions “effectively expands the permitted word count and places ‘a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.’”

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In a recent inter partes review institution decision, the Patent Trial and Appeal Board (PTAB) addressed and rejected a procedural challenge regarding word count compliance, providing guidance on formatting requirements and waiver of procedural objections.

In IPR2025-00112, Patent Owner Miracor Medical SA accused Petitioner Abbott Laboratories of circumventing the 14,000-word limit for IPR petitions through improper formatting. Patent Owner argued that Abbott’s petition “regularly omits a space when citing to exhibits (e.g., ‘Ex.1001’ vs. ‘Ex. 1001’), the expert’s declaration (e.g., ‘¶¶16–19’ vs. ‘¶¶ 16–19’), and statutes (e.g., ‘§103’ vs. ‘§ 103’).” Patent Owner claimed these formatting choices occurred so frequently that “at least 966 words have been improperly undercounted,” resulting in “an advantage to Petitioner and undue prejudice to Patent Owner.” The patent owner sought denial of the entire petition based on this alleged violation.

PTAB’s Established Standards

The Board referenced the Patent Trial and Appeal Board Consolidated Trial Practice Guide, which states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” The guidance specifically warns against manipulative formatting designed to evade word count limitations, citing the Federal Circuit’s decision in Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).

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The Patent Trial and Appeal Board (PTAB) has denied a petition for inter partes review of Phenix Longhorn LLC’s patent, ruling that the petitioner failed to properly address means-plus-function claim limitations as required by USPTO rules.

Background

In IPR2025-00044, Petitioner challenged claims 1-3, 5, and 6 of U.S. Patent No. 7,557,788 B1, titled “Gamma Reference Voltage Generator.” The patent relates to a programmable buffer integrated circuit for generating gamma correction reference voltages used in liquid crystal displays (LCDs).

Key Issue: Means-Plus-Function Claim Construction

The central issue in the case involved proper construction of “means for executing” limitations found in the challenged claims. Under 37 C.F.R. § 42.104(b)(3), petitions must identify the specific portions of the specification that describe the structure corresponding to means-plus-function claim elements. The PTAB found that Petitioner failed to satisfy the mandatory claim construction requirements in multiple ways:

First, the Petitioner took contradictory positions on whether certain claim limitations were means-plus-function terms. As the Board noted: “Petitioner’s argument that claim 3’s ‘means for executing . . . ‘ is means-plus-function language (Pet. 12–14) conflicts and is at odds with Petitioner’s argument that claims 1 and 5’s ‘means for executing’ (discussed above) is not means-plus-function language (Pet. Reply 5).”

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The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) rejected Micron Technology’s arguments that national security and foreign policy concerns should prevent a Chinese memory manufacturer from challenging an American patent, highlighting current limitations on the Board’s discretionary authority.

Central Dispute Over Chinese Government Involvement

In a June 10, 2025 decision, the PTAB granted Yangtze Memory Technologies Co., Ltd. (YMTC) petition challenging Micron’s U.S. Patent No. 8,945,996 B2, despite Micron’s extensive arguments about YMTC’s ties to the Chinese government.  Micron argued that YMTC is fundamentally a Chinese state-owned entity, describing it as “China’s State-Owned NAND Memory Company” and alleging that “the Chinese government is in privity with YMTC and is using YMTC as a proxy to challenge U.S. patents that impede its significant investments in YMTC and strategic objectives in the semiconductor industry.” The patent owner warned that “instituting review would set a dangerous precedent, enabling any foreign government to challenge U.S. patents through proxies and thereby threaten the economic and strategic interests of the United States.”

Board’s Hands Tied on Foreign Policy Considerations

Despite acknowledging these concerns, the PTAB ruled it was powerless to consider such arguments under current USPTO guidance. The Board stated definitively: “To date, the Director has not provided any guidance as to when a panel should deny institution based on foreign policy or national security implications, applicable to the facts presented here.” More significantly, the Board noted that current USPTO policy explicitly prohibits such considerations, explaining that “the USPTO has expressly determined that Board panels, in considering discretionary denial sought in a Preliminary Response filed on or before March 26, 2025, may not consider such factors.” The Board cited official USPTO guidance stating that “The panel will not address any new factors outlined in the Process Memorandum,” effectively ruling that foreign policy and national security implications are off-limits for PTAB panels when deciding whether to institute patent reviews.

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The U.S. Court of Appeals for the Federal Circuit delivered a noteworthy ruling on Jan. 27, 2025, definitively establishing that the Patent Trial and Appeal Board (PTAB) retains jurisdiction to conduct inter partes review (IPR) proceedings even after patents have expired. The decision in Apple Inc. v. Gesture Technology Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025) provides important clarity for future post-expiration challenges.

The Jurisdictional Challenge

Gesture Technology Partners, the patent owner, mounted an aggressive jurisdictional challenge arguing that the PTAB lacked authority to review its expired patent. The company’s U.S. Patent No. 8,878,949, covering camera-based gesture recognition technology, had expired in May 2020—more than a year before Apple filed its IPR petition in June 2021.

Gesture’s argument hinged on an interpretation of the Supreme Court’s 2018 decision in Oil States Energy Services v. Greene’s Energy Group. The company contended that because Oil States characterized patents as “public franchises,” and because expired patents no longer grant the right to exclude others, the “public franchise ceases to exist” upon expiration. With only limited rights remaining—primarily the ability to collect past damages—Gesture argued that jurisdiction shifted exclusively to Article III federal courts.

The Federal Circuit’s Response

Writing for a three-judge panel, Circuit Judge Timothy B. Dyk systematically dismantled Gesture’s jurisdictional argument, finding it “incompatible with the Court’s logic in Oil States.” The court emphasized that the Supreme Court’s reasoning in Oil States was specifically grounded in the concept that IPR proceedings represent “a second look at an earlier administrative grant of a patent.” This fundamental characterization, the Federal Circuit explained, focuses on the review of the original grant decision rather than the current scope of patent rights. “The review of an earlier grant of a patent thus inherently involves the adjudication of a public right, and it is irrelevant whether the patent has expired,” the court stated, “since the patent itself continues to confer a limited set of rights to the patentee.”

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In a significant decision that resolves ongoing disputes among Patent Trial and Appeal Board (PTAB) panels, Acting USPTO Director Coke Morgan Stewart has granted Director Review and established clearer standards for when inter partes review (IPR) petitions should be denied under 35 U.S.C. § 325(d) when prior art was previously considered during patent prosecution.

Case Background

The decision in Ecto World, LLC and SV3, LLC v. RAI Strategic Holdings, Inc. (IPR2024-01280) involved a petition challenging Patent 11,925,202 B2, where all asserted prior art references had been submitted during the original patent prosecution in an Information Disclosure Statement (IDS) containing more than 1,000 references, which is  “over 40 times the size of a typical IDS,” according to the Director’s analysis. The PTAB had initially denied institution under § 325(d), which allows the Director to deny review when “the same or substantially the same prior art or arguments previously were presented to the Office.”

Key Ruling: Petitioners Must Explain Examiner Error

The Director’s decision resolves a critical split among PTAB panels regarding whether petitioners must explicitly demonstrate how the patent examiner erred when relying on previously-considered prior art. The ruling establishes that petitioners must provide an analysis even when the asserted prior art appears on an IDS but was not applied by the examiner.  “A petitioner must explain, with reference to Becton Dickinson factors (c), (e), and (f), how the Examiner erred in overlooking the prior art,” the Director stated, clarifying the second prong of the Advanced Bionics framework. The decision specifically addresses situations where examiners may have overlooked relevant teachings: “A petitioner also may point to the fact that even though the asserted prior art is listed on an IDS, the Examiner did not issue any prior art rejections during examination, so the Examiner materially erred by overlooking certain teachings in the prior art on the IDS.”

Burden Shifting Rejected

The Director firmly rejected attempts by petitioners to shift their burden to the PTAB, noting that “Petitioner’s suggestion that the Board should have scoured the Petition to cobble together an argument under the second part of Advanced Bionics improperly shifts Petitioner’s burden to demonstrate material error onto the Board.”  This ruling emphasizes that “Judges are not like pigs, hunting for truffles buried [in the record].”

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Recent Decision Highlights Discoverability of Funding Arrangements

In a recent discovery dispute in the Northern District of California, Judge Sallie Kim has ordered the plaintiff to produce litigation funding agreements, finding them relevant to potential witness bias. The April 29, 2025 order in Correct Transmission, LLC v. Juniper Networks Inc (Case No. 21-cv-09284-RFL) provides important guidance on when litigation funding arrangements may be discoverable despite work product protection claims.

Case Background

The case involves patent infringement claims brought by Correct Transmission against Juniper Networks. The patents-in-suit have an interesting ownership history, having changed hands multiple times before the current litigation:

  • Originally owned by Orckit Communications (co-founded by CEO Izhak Tamir)
  • After liquidation, purchased by Orckit IP in 2015 (funded by Tamir)
  • Later assigned to Correct Transmission for enforcement and licensing
  • Correct Transmission then entered into litigation funding agreements to monetize the patents

The dispute centered on whether these litigation funding agreements should be produced to the defendant.

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In a significant ruling that could impact patent dispute procedures, Acting United States Patent and Trademark Office (USPTO) Director Coke Morgan Stewart has vacated a Final Written Decision by the Patent Trial and Appeal Board (PTAB) and remanded multiple cases back for further proceedings. The April 24 order addresses procedural issues in a dispute between semiconductor manufacturers and a patent owner that highlight important aspects of inter partes review (IPR) proceedings.

Case Background

The dispute involves petitions filed by Semiconductor Components Industries (doing business as onsemi) and Texas Instruments against patents held by Greenthread LLC. At issue were semiconductor patents (11,121,222 B2 and 10,510,842 B2) being challenged through IPR proceedings IPR2023-01242, IPR2023-01243, and IPR2023-01244.

Director Identifies Key Procedural Errors

Director Stewart’s order identifies several procedural errors that necessitated intervention:

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A federal court in Massachusetts has granted in part a motion for permanent injunction against defendants found liable for misappropriating trade secrets related to an insulin patch pump, imposing several significant remedies including the reassignment of patent applications that incorporate the intellectual property.

The case centered on Insulet Corporation’s Omnipod insulin delivery system, where after a month-long trial, a jury found six defendants liable for misappropriating trade secrets in violation of the Defend Trade Secrets Act (DTSA). The jury awarded Insulet $452 million, consisting of $170 million in unjust-enrichment damages and $282 million in exemplary damages. However, the court ultimately reduced the total damages award to $59.4 million to avoid potential double recovery issues with the injunctive relief.

The court’s April 24, 2025 ruling in Insulet Corporation v. EOFlow Co., Ltd. et al. follows a jury verdict that found the defendants liable for misappropriating four trade secrets belonging to Insulet Corporation, including an occlusion-detection-algorithm (ODA). When addressing Insulet’s request for reassignment of patent applications incorporating aspects of the misappropriated trade secrets, the court explained:

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In a significant reversal for Petitioner Motorola Solutions, the Acting Director of the United States Patent and Trademark Office (USPTO) has granted Stellar LLC’s request for Director Review, vacated the Patent Trial and Appeal Board’s (PTAB) earlier decision instituting inter partes review of four patents, and denied institution.

The March 28, 2025 decision, affecting Stellar, LLC’s U.S. Patent Nos. 7,593,034, 9,485,471, 8,692,882, and 9,912,914, hinged on the application of the Fintiv factors, which guide PTAB discretion in instituting inter partes review when parallel district court proceedings exist. Acting Under Secretary Coke Morgan Stewart found that “the Board’s analysis of factors 3 and 4, and overall weighing of the Fintiv factors was erroneous” and that the Board “did not give enough weight to the investment in the parallel proceeding and gave too much weight to Petitioner’s Sotera stipulation.”

Substantial Investment in Parallel Proceeding

The Director emphasized that by the time Stellar filed its Preliminary Response, the parties had already “served extensive infringement and invalidity contentions, served opening and rebuttal expert reports, filed claim construction briefs, and conducted several depositions.” Additionally, “the court also had held a claim construction hearing and construed the disputed claim terms.” Importantly, the scheduled district court trial date of March 10, 2025, was “eleven months before the Board’s projected final written decision date.” Given these factors, the Director concluded that “factor 3 strongly favors discretionary denial.”

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