Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more
4/22/2025
/ Administrative Procedure Act ,
Inter Partes Review (IPR) Proceeding ,
Judicial Authority ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
USPTO
On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs.
Under the Interim Process,...more
On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the Patent Trial and Appeal Board (PTAB) explaining why the USPTO’s June 2022 Fintiv memo was rescinded and how...more
On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more
3/3/2025
/ America Invents Act ,
Appeals ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 -
Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 -
Decision...more
2/11/2025
/ Abuse of Process ,
Appeals ,
Attorney's Fees ,
Claim Construction ,
Denial of Institution ,
Director of the USPTO ,
Expert Testimony ,
Final Rules ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Sanctions ,
Technology ,
USPTO ,
Vacated
The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more
2/4/2025
/ §315(e) ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Director of the USPTO ,
Final Rules ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rulemaking Process ,
Section 102 ,
Statistical Analysis ,
Statutory Interpretation ,
Technology ,
USPTO
The U.S. Patent & Trademark Office (USPTO) published a final rule on October 10, 2024, that reaffirms that only members of the patent bar may serve as lead counsel in AIA proceedings before the Patent Trial and Appeal Board...more
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more
4/24/2024
/ Advanced Notice of Proposed Rulemaking (ANPRM) ,
America Invents Act ,
Claim Construction ,
Comment Period ,
Derivation Proceeding ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Rules ,
USPTO
The USPTO Director is under no obligation to institute petitions for inter partes review, even if a petition technically meets all of the requirements for institution. There are two well-known flavors of discretionary denial...more
On July 24, 2023, the United States Patent and Trademark Office (USPTO or Office) promulgated a revised interim process for Director Review of Patent Trial and Appeal Board (PTAB or Board) decisions in proceedings under the...more
2/13/2024
/ Advisory Committee ,
America Invents Act ,
Appeals ,
Director of the USPTO ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Trial and Appeal Board ,
Policies and Procedures ,
PTAB Precedential Opinion Panel (POP) ,
Regulatory Agenda ,
USPTO
A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more
2/12/2024
/ America Invents Act ,
Director of the USPTO ,
Estoppel ,
Ex Partes Reexamination ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Standard Essential Patents ,
USPTO
Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET.
The possibility of being estopped from asserting prior art in...more
11/30/2023
/ Claim Preclusion ,
Continuing Legal Education ,
Estoppel ,
Evidence ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art ,
USPTO ,
Webinars
The PTAB Strategies and Insights newsletter provides quarterly updates and insights into how best to handle PTAB trial proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at...more
5/3/2023
/ Collateral Estoppel ,
Director of the USPTO ,
Expert Testimony ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventions ,
Inventors ,
IP Portfolio ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
USPTO
The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more
3/11/2022
/ America Invents Act ,
Ex Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d) ,
USPTO
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more
8/1/2020
/ EU ,
Export Administration Regulations (EAR) ,
Export Controls ,
Exports ,
Filing Requirements ,
Foreign Patent Applications ,
Germany ,
Intellectual Property Protection ,
IP License ,
ITAR ,
Multinationals ,
Open General Export Licences (OGELs) ,
Patent Cooperation Treaty ,
Patent Portfolios ,
Patent Prosecution ,
USPTO ,
WIPO
One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more
3/12/2020
/ Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Concurrent Litigation ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Litigation Strategies ,
Patent Infringement ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Phillips Standard ,
Post-Grant Review ,
Standard of Review ,
Trial Practice Guidance ,
USPTO
On August 10, 2018, the United States Patent and Trademark Office published a Federal Register notice announcing updates to the Office Patent Trial Practice Guide (TPG). The TPG was first published in August 2012 to provide...more
8/27/2018
/ Administrative Procedure Act ,
America Invents Act ,
Expert Witness ,
Motion to Exclude ,
Motion To Strike ,
Oral Hearings ,
Patent Litigation ,
Patent Oppositions ,
Patent Trial and Appeal Board ,
Patents ,
Rebuttal ,
Trial Practice Guidance ,
USPTO
Following up on our article on depositions the Board recently denied a motion for sanctions by the Patent Owner, which alleged that the Petitioner’s questioning during deposition exceeded the scope of the witness’s...more
7/30/2018
/ Declaration ,
Depositions ,
Motion for Sanctions ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Sanctions ,
Scope of Discovery Requests ,
Testimony ,
USPTO ,
Witness Statements
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
7/20/2018
/ Administrative Law Judge (ALJ) ,
Administrative Procedure ,
Administrative Proceedings ,
Appeals ,
Constitutional Challenges ,
Depositions ,
Expert Witness ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Lucia v SEC ,
Motion To Seal ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Sanctions ,
SCOTUS ,
USPTO