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Articles by Brandon R. Theiss
PTAB Panels Should Revamp Their IPR Merits Decisions
By Brandon Theiss ( October 6, 2026, 5:47 PM EDT) -- Editor's note: Law360 welcomes opinionated commentary and debate in our Expert Analysis section. To submit op-eds or rebuttals, or to speak to an editor about submissions, please email expertanalysis@law360.com.... Law360 is on it, so you are, too. A Law360 subscription puts you at the center of fast-moving legal issues, trends and developments so you can act with speed and confidence.
Seeking Discretionary Denial in Ex Parte Reexamination: Patent owner timing and procedure
A patent owner served with an ex parte reexamination request may immediately recognize the references, the proposed combinations, or even entire passages of the requester’s arguments. That familiarity presents a practical question: when can the owner ask the United States Patent and Trademark Office to decline another examination under 35 U.S.C. § 325(d)? The answer depends on the proceeding’s stage and the procedural vehicle used to put the issue before the Office.
Three Weeks of Patent Law and a Challenge to a Ben Affleck Patent | JD Supra
In three weeks, a group of New Jersey high school students learned enough patent law to develop a challenge to a patent issued to actor and filmmaker Ben Affleck. Their work began with a close reading of the patent and grew into a paper comparing its claims with earlier technology. That research later formed the basis of a request for ex parte reexamination filed with the United States Patent and Trademark Office.
Do Not Give the Requester a Second Brief: Why Patent Owners Should Usually Waive the Post-Order Statement When Ex Parte Reexamination Runs Alongside Litigation
Executive Summary: This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304.
Fed. Circ.'s Shaping Of Tech Patent Doctrine Resembles EPO's
By Brandon Theiss ( August 6, 2026, 7:30 PM EDT) -- On July 23, the U.S. Court of Appeals for the Federal Circuit turned a family of digital picture frame patents into an unusually clean experiment in patent eligibility.... Law360 is on it, so you are, too. A Law360 subscription puts you at the center of fast-moving legal issues, trends and developments so you can act with speed and confidence.
From Argument to Evidence: The Importance of Expert Declarations in Responding to a Non-Final Office Action in Ex Parte Reexamination | JD Supra
Executive Summary: In ex parte reexamination, a patent owner's response to a non-final Office Action is often a critical opportunity to build the factual record, particularly when the rejection depends on technical assumptions about prior-art references, claim mappings, system architecture, protocols, or an obviousness rationale.
Mis-Mapping, Not Mini-Trial: A Case Study in the USPTO's New Pre-Order Paper Procedure | JD Supra
Executive Summary: The USPTO's new pre-order paper procedure gives patent owners a narrow but potentially consequential opportunity to challenge an ex parte reexamination request before the Office orders reexamination, but the article emphasizes that this opportunity must be framed consistently with the low SNQ threshold: the patent owner need not, and should not, try to disprove unpatentability; rather, it should show that the request misidentifies the cited reference's teaching or mis-maps...
Same Office Action, Different Stakes: Responding to USPTO Office Actions in Ex Parte Reexamination and Ordinary Patent Prosecution
Executive Summary: This article explains why responding to an Office Action in ex parte reexamination requires a different strategy than responding during ordinary patent prosecution. In ordinary prosecution, the applicant is generally trying to obtain commercially useful claim scope and may have procedural flexibility through amendment, RCE practice, or continuation practice.
The Case For Using Final-Offer Damages Forms In IP Suits
By Brandon Theiss ( July 1, 2026, 4:46 PM EDT) -- Patent lawyers tend to fight hard over experts and instructions, then tolerate verdict forms that collapse months of doctrinal precision into one blank line. That habit is becoming harder to defend.... Law360 is on it, so you are, too. A Law360 subscription puts you at the center of fast-moving legal issues, trends and developments so you can act with speed and confidence.
If AI Can Be Rightfully Named As A Joint Inventor, Is The Patent Invalid?
Introduction The recent debate over artificial intelligence and inventorship has often focused on a single question: can an AI system such as ChatGPT, DABUS, or another generative model be named as an inventor on a United States patent application? The Federal Circuit answered that question in Thaler v. Vidal, holding that the Patent Act limits inventorship to natural persons. Thaler v. Vidal, 43 F.4th 1207, 1211-13 (Fed. Cir. 2022). Yet the next wave of disputes is unlikely to end with Thaler.
A Fed. Circ. Blueprint For Drafting Medical Device Patents
By Brandon Theiss ( May 19, 2026, 6:08 PM EDT) -- With medical devices and software as a medical device, or SaMD, it is easy to write claims that sound like clinical goals and hard to write claims that capture the engineering that achieves those goals.... Law360 is on it, so you are, too. A Law360 subscription puts you at the center of fast-moving legal issues, trends and developments so you can act with speed and confidence.
Open-Source Software IP Analysis Needs to Include Patent Risks
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The POSITA Under BRI: The Constraint That Keeps “Broad” from Becoming “Anything” | JD Supra
Broadest Reasonable Interpretation (BRI), as applied during USPTO examination, is often described as a “broad” claim construction standard. That description is accurate as far as it goes, but it is incomplete in a way that routinely drives avoidable disputes in prosecution. The controlling point is the one many applicants quote back to the Office: “The broadest reasonable interpretation does not mean the broadest possible interpretation.” MPEP § 2111.
Open Source, Closed Door: Managing Patent Risk in Open Source (OSS)-Driven Products
Brandon R. Theiss of Volpe Koenig. Courtesy photo Introduction: The Paradox of 'Free' Software Open-source software (OSS) is the paradoxical infrastructure of the modern economy. It is frequently “free” in price, yet indispensable in value. Cloud computing, container orchestration, continuous integration pipelines, and AI development environments are routinely built on OSS stacks such as Kubernetes and Docker. The economic consequence is straightforward.
Sharpening the Sword, Exposing the Shield: SDD Practice and the Ironburg “Skilled Searcher” Standard | JD Supra
The terrain of inter partes review (IPR) strategy shifted meaningfully on November 17, 2025. On that date, the USPTO issued a memorandum authorizing voluntary Search Disclosure Declarations (SDDs), positioning them as a pro‑institution factor in IPR and PGR practice. At first glance, the SDD looks like a one‑way ratchet in petitioners’ favor: disclose your search methodology, strengthen your story of Office error, and improve your institutional odds. But once Ironburg Inventions Ltd. v. Valve Corp.
From Shield to Sword: Using Examiner-Considered Art to Beat § 325(d) | JD Supra
In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d). Early PTAB decisions like Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), and Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (P.T.A.B. Feb.
“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials--Why Late-Stage IPRs Are Getting Harder to File
When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408 Paper 21, much of the commentary focused on the result. But the more consequential development lies in her reasoning. The Director grounded her decision on the patent owner’s “settled expectations,” emphasizing that the challenged patent had been in force for nearly eight years.
“Settled Expectations” as the New Gatekeeper for PTAB Discretionary Denials: Why Late-Stage IPRs Are Getting Harder to File | JD Supra
When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408 Paper 21, much of the commentary focused on the result. But the more consequential development lies in her reasoning. The Director grounded her decision on the patent owner’s “settled expectations,” emphasizing that the challenged patent had been in force for nearly eight years.
When an IDS Comes Back to Haunt You: Lessons from iRhythm v. Welch Allyn | JD Supra
Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from future invalidity attacks by establishing that the art was “considered” by the USPTO, and protects against charges of inequitable conduct when material references are disclosed in good faith. However, a recent decision by the USPTO Director in iRhythm v.
ChatGPT Meets the POSITA: How AI Is Reshaping the Foundations of Patent Law
The emergence of generative artificial intelligence (AI) has brought about a transformative shift in how technical knowledge is created, analyzed, and applied across a broad spectrum of fields. At the forefront of this transformation are large language models like ChatGPT, which demonstrate a remarkable ability to process and synthesize complex technical information.
Artificial Ingenuity: Is Generative AI the New 'Person of Ordinary Skill' in Patent Law? | JD Supra
The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements under 35 U.S.C. § 112. Traditionally, the POSITA is defined by their technical competence and ordinary creativity, enabling them to recognize and combine known methods to achieve predictable outcomes.
The Obvious Choice? Why Result-Effective Variables Matter in Patent Law | JD Supra
Determining whether a claimed invention is obvious under 35 U.S.C. § 103 often depends on whether the prior art provides a clear motivation for modifying existing knowledge. Central to this analysis is the concept of a “result-effective variable”—a parameter recognized in the prior art as influencing a particular property or outcome.
Designs on Trial: Comparing U.S. and EU Design Protections Post-LKQ
The landscape of design protection has seen significant developments on both sides of the Atlantic, with the U.S. undergoing a pivotal shift in design patent law following the Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), while the European Union continues to operate under the established framework for Community Registered Designs (CRDs).
Designs on Trial: Comparing U.S. and EU Design Protections Post-LKQ | JD Supra
The landscape of design protection has seen significant developments on both sides of the Atlantic, with the U.S. undergoing a pivotal shift in design patent law following the Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348 (Fed. Cir. May 21, 2024), while the European Union continues to operate under the established framework for Community Registered Designs (CRDs).
Patently Unclear: Why Result-Oriented Claims Don't Make The Cut Under 35 U.S.C. § 101
Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas.
Navigating Final Rejections In Patent Prosecution: AFCP 2.0 Vs. 37 CFR § 1.116
Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened two-month statutory window.
Federal Circuit Clarifies Obviousness-Type Double Patenting In Allergan V. MSN Laboratories: The Impact Of Patent Term Adjustments On First-Filed Patents - Patent - Intellectual Property - United States
In the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd., the Federal Circuit addressed the issue of obviousness-type double patenting (ODP) concerning claim 40 of U.S. Patent No. 7,741,356 (the '356 patent). This patent was challenged based on the assertion that it was invalid due to ODP over two related patents, U.S. Patent Nos. 8,344,011 (the '011 patent) and 8,609,709 (the '709 patent).
"At Least One Of" Revisited: Arguing SuperGuide as a Basis for Patent Validity
The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements? SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004). What seems to be a triviality becomes critical under SuperGuide.
Discretionary Denials under Fintiv Rebooted by Vidal’s Decision
The Director of the USPTO, Kathi Vidal, issued a decision this week raising the likelihood that the Patent Trials and Appeals Board (PTAB) will exercise its discretion to deny the institution of Inter Partes Review (IPR) challenges. Last June, Vidal issued guidance on the discretionary denial standard, which was widely interpreted to be the death knell for discretionary denials. The Director’s decision this week will undoubtedly change that view.
A Different State of Mind: Getting Technical With Post-Grant Proceedings Before the PTAB
One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation.
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