On March 26, 2025, the Acting Director of the United States Patent and Trademark Office fundamentally changed how the Patent Trial and Appeal Board (“PTAB”) initially considers petitions in post grant proceedings under the...more
Prior art patents and publications have long been the primary source for anticipation and obviousness assertions by defendants in IP litigation. System art—an actual system or device—is a less common source of prior art due...more
Knowing what qualifies as prior art is a core requirement of patent practitioners—whether in life sciences, in the technology sectors or in post-grant proceedings. It is important to keep abreast of changes to the rules,...more
With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more
3/28/2025
/ Administrative Procedure Act ,
Appeals ,
Corporate Counsel ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Regulatory Reform ,
USPTO
Administrative agencies long enjoyed deference from the courts under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Chevron required courts to give leeway to agencies interpreting...more
On November 15, 2022, the Berkeley Center for Law and Technology hosted a webinar to address the recent, unprecedented collaboration between the U.S. Patent and Trademark Office (USPTO) and the Food and Drug Administration...more
Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to...more
No recent Patent Trial and Appeal Board (PTAB) decision has been more impactful than Apple Inc. v. Fintiv, Inc., IPR2020-00019 (Mar. 20, 2020). It has led to about 200 discretionary denials of post grant proceedings, sparked...more
On the same day that patent challengers breathed a sigh of relief once the Supreme Court upheld the constitutionality of inter partes review (IPR) in Oil States, the Court also threw a monkey wrench into the way IPRs will be...more
In an April 1, 2016 Federal Register Notice (“Notice”),1 the United States Patent and Trademark Office (“Office”) finalized amendments to rules governing trial practice for inter partes review, post-grant review, transitional...more
4/4/2016
/ America Invents Act ,
Claim Construction ,
Covered Business Method Proceedings ,
Expert Testimony ,
Federal Register ,
Inter Partes Review (IPR) Proceeding ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for...more