Posts in USPTO

Under 35 U.S.C. Section 256, one can only correct an inventorship error when the underlying facts and the affected parties can actually be identified, and when the statutory correction procedure can be completed. AI-assisted invention is starting to produce cases where none of that is possible: the development record shows plenty of human activity, but nothing in it establishes which person actually conceived the claimed invention. After Fortress Iron, LP v. Digger Specialties, Inc., No. 2024-2313 (Fed. Cir. Apr. 2, 2026, that kind of gap can turn into a validity problem, not just a paperwork one.

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a ruling in Vieth v. MOM Enterprises, LLC affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of Elaine and Dr. Reinhold Veith’s patent claims to methods of administering vitamin D to human beings. The Federal Circuit agreed that most of the claim construction and prior art arguments raised by the Vieths on appeal were forfeited for not being properly developed in the proceedings below, and also dismissed the Vieths’ contentions that they had established nexus between industry praise for its products and the challenged method claims.

The House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, Artificial Intelligence, and the Internet held an oversight hearing today to consider its role in renewing the U.S. Patent and Trademark Office’s (USPTO’s) fee setting authority. Throughout the hearing, Subcommittee Chairman Darrel Issa (R-CA) expressed skepticism about USPTO Director John Squires’ recent changes to discretionary denial practice at the Patent Trial and Appeal Board (PTAB) and wondered whether renewal of such authority under the America Invents Act (AIA) should be conditioned on reforms to the agency’s policy.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in Netlist, Inc. v. Micron Technology, Inc., affirming a Patent Trial and Appeal Board (PTAB) final written decision that found all challenged claims of a Netlist computer memory patent unpatentable as obvious. The court rejected Netlist’s arguments that the Board’s findings lacked substantial evidentiary support and that the Board violated the Administrative Procedure Act (APA) in reaching its conclusions.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday handed SpaceTime3D, Inc. mixed results in two nonprecedential decisions involving graphical user interface patents challenged by Apple Inc. and Google LLC, with the outcomes turning largely on differences in the wording of related claims. In Apple Inc., Google LLC  v. SpaceTime3D, Inc., the court affirmed a Patent Trial and Appeal Board (PTAB) decision upholding claims 1-13 of U.S. Patent No. 8,881,048 but finding claims 14-18 obvious. In a separate appeal, SpaceTime3D, Inc. v. Apple Inc., Google LLC, the CAFC affirmed the Board’s determination that all challenged claims of U.S. Patent Nos. 9,304,654 and 9,696,868 were obvious.

On Friday, an amicus brief was filed at the U.S. Supreme Court on behalf of major trade associations in the computer software, automotive, retail and other industries, urging the Court to grant Tesla’s petition for writ of certiorari following the denial of its petitions for inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) challenging patent claims owned by self-driving technology company Granite Vehicle Ventures. The industry groups claim that the Court’s review is necessary to address so-called “patent trolls” and policies adopted by the U.S. Patent and Trademark Office (USPTO) that effectively eliminate the use of IPRs to combat these allegedly bad actors.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Friday that it lacks jurisdiction to hear an appeal filed by T-Mobile US, Inc. and T-Mobile USA, Inc. against KAIFI LLC arising from a dispute over a patent settlement agreement, transferring the case to the U.S. Court of Appeals for the Fifth Circuit. In T-Mobile US, Inc. v. KAIFI LLC, Circuit Judge Chen authored the opinion for a panel that included Circuit Judges Taranto and Schall, concluding that the underlying disagreement over settlement contract language did not necessarily raise a substantial question of patent law.

The U.S. Patent and Trademark Office’s (USPTO’s) Office of Enrollment and Discipline (OED) posted a final order to its website on August 27, publicly reprimanding a California patent attorney for submitting a claim construction chart containing citations that generative AI invented — not to case law, but to the intrinsic record of the patent in suit. In re Brian E. Mitchell, Proceeding No. D2026-16, resolves by settlement. Mitchell executed the agreement on July 20, 2026, and the OED Director on July 21. Tricia Choe, Associate General Counsel for General Law, approved it on July 27 on delegated authority from Under Secretary of Commerce for Intellectual Property and USPTO Director John A. Squires.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two decisions today in related appeals arising from inter partes review (IPR) proceedings between Apple Inc. and Smart Mobile Technologies LLC. In the case, Apple Inc. v. Smart Mobile Technologies LLC, the CAFC affirmed a Patent Trial and Appeal Board (PTAB) determination that Apple failed to prove certain claims of two Smart Mobile patents unpatentable as obvious, while vacating and remanding a separate portion of the same judgment that had found other claims obvious. In the companion appeal, the CAFC affirmed the PTAB’s decision rejecting Apple’s obviousness challenge to a third related patent. Circuit Judge Stark authored both opinions for a panel that included Circuit Judges Reyna and Hughes.

An AI interaction can give rise to a Rule 56 disclosure obligation. Not because AI was involved, but because of the information the interaction put before you. The U.S. Patent and Trademark Office (USPTO) has already drawn that line. Its April 2024 guidance says there is no general obligation to disclose that an AI tool was used; the duty is implicated when the use rises to the level of materiality under Rule 56(b). The trigger is materiality, not AI.

In 2025, a patent dispute between Chinese companies in the camera-module space drew close attention across the industry — SUNNY v. AAC [Patent Reexamination and Invalidation Department Decision No. 566288, et al.]. The case ended with 11 patents invalidated, four of them in their entirety. There was a single reason: the claims were not supported by the specification.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Zilkr Cloud Technologies, LLC v. Cisco Systems, Inc., vacating in part and affirming in part a Patent Trial and Appeal Board (PTAB) final written decision. The PTAB had held claims 1, 2, 6 through 8, and 12 through 14 of a patent owned by Zilkr Cloud Technologies, LLC unpatentable as obvious, and the CAFC remanded for further proceedings. The opinion was authored by Chief Judge Moore.

Yesterday, the U.S. Patent and Trademark Office (USPTO) announced that the agency had designated as informative a Patent Trial and Appeal Board (PTAB) decision in an ex parte appeal reversing an examiner’s rejection of patent claims directed to the isolation and detection of microRNA (miRNA) to determine a patient’s risk of radiation exposure for improper Markush groupings. Drawing primarily upon case law from the predecessor to the U.S. Court of Appeals to the Federal Circuit, the informative designation is notable for its alignment with recent Federal Circuit case law encouraging flexibility in Markush grouping analyses.

Following the U.S. Patent and Trademark Office’s (USPTO’s) July 2026 proposal to require third-party requesters for ex parte reexamination (EPR) to identify all real parties in interest (RPIs), the 26 comments submitted to the Office reveal a sharp divide among the patent owners, tech companies, industry associations and individuals who weighed in. The comment period closed August 21, and the commenters included 17 organizations, associations or companies and 8 individuals (a duplicate comment was submitted by the Intellectual Property Owners Association (IPO).