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Daniel Yannuzzi

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Daniel Yannuzzi is a partner and Practice Group Leader of the Intellectual Property Practice Group.

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The USPTO’s recently published notice of proposed rulemaking (RIN 0651-AD89, Docket No. PTO-P-2025-0025) for inter partes review (IPR) proceedings seeks to curb multiple IPR challenges to the same patent. This aligns with the USPTO’s recent and decisive shift toward limiting accessibility of IPRs as a means to challenge patents outside of the district courts. While the USPTO claims to promote “fairness, efficiency, and predictability,” the practical impact would be a dramatic change in the risk calculus for accused infringers—especially those who never had their own opportunity to mount a proper challenge. Parties would be stuck with the results of someone else’s work product, no matter how flawed it was. For purposes of §§ 102/103, the USPTO effectively seeks to move beyond the presumption of validity and create a final determination of validity as far as IPR challenges are concerned.Continue Reading USPTO’s Proposed “One and Done” IPR Rule: Rethinking Finality, Fairness, and Efficiency

The United States Patent and Trademark Office (USPTO) is rolling out a new Automated Search Pilot Program, offering applicants a first-of-its-kind opportunity to receive a pre-examination, AI-generated prior art search report. The program’s stated goals are to improve prosecution efficiency and the quality of patent examination by providing an Automated Search Results Notice (ASRN) before an examiner reviews the case. The ASRN is intended to provide an earlier communication regarding potential prior art issues and could bring about significant changes in how utility filings are prosecuted and strategized.Continue Reading USPTO’s Automated Search Pilot Program: Early Prior Art Insights—Promises and Pitfalls for Patent Applicants

The Federal Circuit recently issued a nonprecedential order denying IOENGINE, LLC’s petition for panel rehearing and rehearing en banc in in Ingenico Inc. v. IOENGINE, LLC (No. 2023-1367). IOENGINE sought further review of the court’s earlier decision on the boundaries of IPR estoppel, but the court declined to revisit the issue. The order marks the close of Federal Circuit review for this phase of a high-profile patent dispute and confirms the boundaries on IPR estoppel set by the Federal Circuit.Continue Reading Final Word on IPR Estoppel: Rehearing Denied in Ingenico v. IOENGINE

In a setback for automakers, the Patent Trial and Appeal Board (PTAB) has once again upheld the validity of Neo Wireless’s U.S. Patent No. 10,447,450, rejecting challenges brought by several major automakers. The most recent decision, Ford Motor Co. v. Neo Wireless (Sept. 3, 2025), follows last year’s similar outcome in American Honda, GM, Nissan & Tesla v. Neo Wireless (Nov. 1, 2024).Continue Reading PTAB Again Upholds the Heavily Litigated Neo Wireless Patent: What the Latest Decisions Mean for Automakers

In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held that estoppel stemming from inter partes reviews (IPR) applies only to grounds based on patents and printed publications—not to patents or printed publications evidencing other grounds that could not have been raised during the IPR.Continue Reading A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

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.Continue Reading Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals

In a significant decision, the Federal Circuit reversed the U.S. International Trade Commission’s (ITC) finding that claims of U.S. Patent No. 10,508,502 (502 Patent) were invalid under 35 U.S.C. § 101. The opinion addresses critical issues in patent eligibility jurisprudence, particularly regarding composition-of-matter claims and provides additional clarity for patent owners facing § 101 challenges.Continue Reading Federal Circuit Clarifies § 101 Patent Eligibility for Composition-of-Matter Claims

The U.S. Supreme Court has once again been urged to revisit 35 U.S.C. § 101, the statute governing patent eligibility. Audio Evolution Diagnostics, Inc. (AED) filed a petition for writ of certiorari, challenging the Federal Circuit’s summary affirmance under Rule 36 of a ruling that invalidated its patents under the Alice/Mayo framework. Should the SCOTUS take up the case, this presents an opportunity for the Court to clarify the boundaries of patent eligibility and address concerns over the Federal Circuit’s handling of such cases.Continue Reading Patent Eligibility: The Call for Supreme Court Clarity and for an End to Summary Affirmances

In a per curium order issued under seal May 3, 2023 but recently made public, the Patent Trial and Appeal Board awarded sanctions against Patent Owner, Longhorn Vaccines & Diagnostics, canceling all challenged claims of its five asserted patents for its “egregious abuse of the PTAB process.” Particularly, the Board determined that Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the Board by “selectively and improperly” withholding information material to the patentability of the claims challenged in the IPR proceeding.Continue Reading “Egregious Abuse” of the PTAB Process Leads to Adverse Decision Sanctions in IPR Proceeding

On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. et al. v. Sanofi, et al., No. 21-757. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly infringing two of its patents in 2014, the Supreme Court held that Amgen’s asserted patents failed to satisfy the enablement requirement under 35 U.S.C. § 112(a), and are thus invalid.Continue Reading SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. Booking.com). In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” terms.
Continue Reading USPTO Issues Guidance on Examination of Generic.com Terms