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USPTO’s Notice of Proposed Rulemaking for Discretionary Denial Briefing, Section 325(d), Instituting Parallel and Serial...

On April 19, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) that proposes rules regarding the exercise of discretion to determine whether to institute an Inter Partes...more

USPTO Issue Notice of Proposed Rulemaking for Rules Governing Director Review of Patent Trial and Appeal Board Decisions

On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA)...more

Ranking Parallel Petitions Before the PTAB: A Survey

On November 10, 2018, Comcast Cable Communications, LLC (Comcast) filed six inter partes review (“IPR”) petitions, each challenging claims 1–28 of Rovi Guides, Inc.’s (Rovi’s) U.S. Patent No. 7,827,585. In an unprecedented...more

Key Takeaways from the First Updates to the AIA Trial Practice Guide

On August 13, the Patent Trials and Appeal Board (PTAB or Board) published updates to the AIA Trial Practice Guide (the TPG Update). The TPG Update is a supplement to the original Trial Practice Guide (TPG), which the PTAB...more

PTAB's 1st Preliminary Reply And Surreply Under New Rules

The most recent Patent Trial and Appeals Board rule changes, effective May 2, 2016, allow petitioners to seek leave to file a reply to a patent owner preliminary response upon a showing of good cause. Amendments to the Rules...more

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

The United States Patent and Trademark Office has used a “broadest reasonable interpretation” (BRI) standard for claim interpretation when examining pending patent applications. Under the BRI standard, a claim term is...more

US Patent Office Issues Updated Guidance Regarding Patentable Subject Matter

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance on subject-matter eligibility under 35 U.S.C. 101, intended to “assist examiners in applying the 2014 Interim Patent Eligibility...more

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