News & Analysis as of

Administrative Review Inter Partes Review (IPR) Proceeding

WilmerHale

PTAB/USPTO Update - May 2024

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On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

Venable LLP

PTAB Proposes Rules Governing Director Review of PTAB Decisions

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On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures....more

Jones Day

PTAB Publishes Revised Oral Hearing Guide

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The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings.  The revised Guide includes changes to: 1. Remote participation in PTAB...more

Goodwin

Issue 42: PTAB Trial Tracker

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The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Venable LLP

PTAB Eliminates POP Review and Expands Director Review to Institution Decisions

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As of July 24, 2023, the United States Patent and Trademark Office (USPTO) revised the interim Director Review process and replaced the Precedential Opinion Panel (POP) with the Appeals Review Panel process, which will review...more

Goodwin

Issue 39: PTAB Trial Tracker

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USPTO Director Considers Changes to Director Review Process - Recently, USPTO Director Kathi Vidal stated that she is rethinking the Director Review process and is considering updating the current guidance on Director...more

Jones Day

Interim Fintiv Guidance Discussed in PTAB Boardside Chat

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During the Patent Trial and Appeal Board (“PTAB”) Boardside Chat on July 7, 2022, discussion focused on Director Katherine Vidal’s interim guidance on discretionary denials under the Board’s precedential Apple v. Fintiv...more

Jones Day

Patent Office Interim Process Aimed To Improve Consistency

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On May 26, 2022, the Patent Office issued its “Interim Process for PTAB Decision Circulation And Internal PTAB Review”. The Office issued the Process to explain its new procedures for circulating pre-issuance decisions, which...more

Jones Day

PTAB Details Interim Procedure for Requesting Arthrex Director Review

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On June 29th, the PTO issued an initial protocol for requesting Director review of a PTAB Final Written Decision according to the Supreme Court’s Arthrex decision.  This Arthrex protocol is similar to the current procedure...more

Polsinelli

The PTAB and the Arthrex Decision: A Constitutional Question

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The Appointments Clause of the U.S. Constitution1 provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand,...more

Jones Day

The PTAB Must Address All Grounds, Even After Final Written Decision

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Amazon.com, Inc. and Blizzard Entertainment, Inc. (“Amazon”) filed a petition for inter partes review challenging the validity of AC Technologies S.A.’s (“AC”) U.S. Patent No. 7,904,680. See IPR2015-01802. Amazon asserted...more

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