News & Analysis as of

Appeals Inter Partes Review (IPR) Proceeding America Invents Act

Morrison & Foerster LLP

Discretionary Denials—Act II

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

Womble Bond Dickinson

USPTO Implements Bifurcated Review Process for PTAB Petitions Under New Policy

Womble Bond Dickinson on

USPTO Acting Director Coke Morgan Stewart announced that she will personally decide whether to deny each petition challenging a patent on discretionary grounds before the Patent Trial and Appeal Board evaluates the merits....more

Latham & Watkins LLP

USPTO Implements Interim Procedures Bifurcating Decisions to Institute AIA Trials

Latham & Watkins LLP on

On March 26, 2025, Acting Director of the United States Patent and Trademark Office (USPTO) Coke Morgan Stewart issued a memorandum (the Workload Memorandum) to all Administrative Patent Judges (APJs) of the Patent Trial and...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Private Sale by Inventor Does Not Trigger Prior Art Exception Under the AIA

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation”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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Year in Review – USPTO Rulemaking in 2024 Related to PTAB Practice and Procedures

The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends

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

Wilson Sonsini Goodrich & Rosati

2024 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2024 PTAB Year in Review. We begin with a review of 2024 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2024 #2

DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024) In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Erise IP

Eye on IPRs, January 2024: Intel Damages Go to Retrial after PTAB Win, Pushback on IPR Changes, and More

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: After IPR victory, Intel wins appeal on $2.2 billion patent award - Bloomberg...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

McDermott Will & Emery

Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision

US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential...more

Sheppard Mullin Richter & Hampton LLP

PTAB Makes Significant Changes to Director Review Process

After considering comments from various stakeholders for nearly a year, on July 24, 2023, the USPTO issued the revised interim Director Review Process. Among other changes, the revised process now permits parties to request...more

Jones Day

PTAB Clarifies Claim Preclusion Standards

Jones Day on

On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2023 #3

Medtronic, Inc. et al. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2356, -2358, -2361, -2363, and -2365 (Fed. Cir. May 24, 2023) In this week’s Case of the Week, a split panel of the Federal Circuit considered...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis and Trends: PTAB: Odds of Escaping Challenges Remain Steady for Design Patents,...

In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more

McDermott Will & Emery

Review Delayed Is Not Review Denied

McDermott Will & Emery on

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022 #3

Polaris Innovations Ltd. v. Brent, Appeal No. 2019-1483 (Fed. Cir. Sept. 15, 2022) - In our Case of the Week, the Federal Circuit provided what appears to be its first precedential opinion construing Section 317 of the...more

McDermott Will & Emery

Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #4

This week, we provide extensive write-ups about two consequential decisions issued by the United States Court of Appeals for the Federal Circuit concerning two procedural issues under the America Invents Act (“AIA”), both...more

McDermott Will & Emery

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more

McDermott Will & Emery

2022 IP Outlook Report: The Developments Shaping Patent Law

McDermott Will & Emery on

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

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

[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

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