News & Analysis as of September 20, 2024

America Invents Act › Ex Partes Reexamination

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

Patent Poetry: Federal Circuit Upholds IPR Estoppel Provisions

AEON Law on 8/5/2024

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB or Board) concerning the application of 37 CFR § 42.73(d)(3)(i)’s estoppel provisions in invalidating amended patent claims....more

What is a Streamlined Reexamination Request (SRR)?

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2024

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more

Patent Trial and Appeal Board Publishes Updated Oral Hearing Guide

Manatt, Phelps & Phillips, LLP on 7/9/2024

The Patent Trial and Appeal Board (Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. The changes include: Remote option for participating in America Invents Act (AIA) trials....more

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on 4/23/2024

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 4/19/2024

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/19/2024

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

2023 PTAB Year in Review: Editors’ Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

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

2023 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

The Presumption of Validity Is Dead; Long Live the Presumption of Validity?

Manatt, Phelps & Phillips, LLP on 10/12/2023

Executive Summary - The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

2021 PTAB Year in Review: Analysis & Trends: The Resurgence and Perils of Ex Parte Reexaminations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/23/2022

Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/15/2022

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

2021 PTAB Year in Review: Analysis & Trends: Discretionary Denial under § 325(d): Strategic Implications of the PTAB’s Advanced...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/11/2022

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

2021 PTAB Year in Review: Analysis & Trends: Data & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/9/2022

SEPs: Not as Strong as they Seem?...more

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2022

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 patent litigation. In its first...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[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

NHK-Fintiv Frustration: Status of the Current Challenges and the Uncertain Fate of the PTAB’s Discretionary Denial of IPRs

Haug Partners LLP on 2/18/2022

Several challenges have been made recently to the Patent Trial and Appeal Board’s (“PTAB’s or Board’s”) controversial practice of denying inter partes review (IPR) petitions based on the status of parallel infringement...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Ex Parte Reexamination Not Allowed After Failed IPR Challenge

McDermott Will & Emery on 10/14/2021

The US Court of Appeals for the Federal Circuit found that ex parte reexamination was unavailable to a challenger who repeatedly tried and failed to raise the same arguments for the same patent in a prior inter partes review...more

Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

Morrison & Foerster LLP - Federal Circuitry on 10/5/2021

Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of...more

PTAB’s Motion to Amend Pilot Program: Review of Initial Results

Foley & Lardner LLP on 8/20/2020

Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more

Can Patent Claims be Cancelled Based on Indefiniteness by the PTAB during an IPR?

International Lawyers Network on 6/3/2020

For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes...more

Potential Changes to PTAB Practice on Multiple IPR Petitions

WilmerHale on 11/27/2019

An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more

Give and Take: IPR of Pre-AIA Patent is NOT an Unconstitutional Taking

Mintz - Intellectual Property Viewpoints on 8/12/2019

On July 30, 2019, the Federal Circuit held that retroactive application of IPR (inter partes review) proceedings to pre-AIA (America Invents Act) patents is not an unconstitutional taking under the Fifth Amendment (Celgene...more

PTAB Strategies and Insights - July 2019: Are the DMV Sloths From Zootopia Reflective of the Pace for Reissue Applications from...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/20/2019

The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more

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America Invents Act › Ex Partes Reexamination

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