Fallout from the Fintiv Precedential Decision
JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional ... What Now?
The United States Patent and Trademark Office (USPTO) has recently made several significant changes that are reshaping discretionary denials at the Patent Trial and Appeal Board (PTAB). ...more
On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more
We have previously discussed the ramifications of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the PTAB cannot institute an IPR on only some of the petitioned claims. One open question was...more
We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more
As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more
On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in...more
On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more
On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim...more
On April 30, 2018, the Patent Trial and Appeal Board (PTAB) held a “Chat with the Chief” webinar to discuss the impact of SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018). The webinar was widely attended, drawing about 700...more
In a pair of decisions issued on April 24, 2018, the U.S. Supreme Court clarified the constitutionality of and the appropriate practice for inter partes review. The 7-2 majority opinion in Oil States Energy Services, LLC v....more
On November 21st, the PTAB issued guidance for motions to amend in post-grant trials based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In line with that...more