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Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more
A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more
On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced changes to the Patent Trial and Appeal Board (PTAB) trial institution process, creating a new bifurcated approach to institution decisions....more
A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary considerations and...more
In CQV Co. Ltd. v. Merck Patent GmbH, the Federal Circuit addressed (1) the interaction of indemnification agreements with Article III standing for appeals of post-grant review decisions of the Patent Trial and Appeal Board;...more
On Friday afternoon, February 28, 2025, the United States Patent and Trademark Office (USPTO) issued a brief “bulletin” rescinding a memorandum issued by the former Director Kathy Vidal (“Vidal Memo”) providing guidance on...more
In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
In one of the first acts by the United States Patent and Trademark Office (USPTO) in the new administration, the USPTO – via an email sent February 28 – rescinded former USPTO Director Kathi Vidal’s 2022 memorandum titled...more
On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed...more
For many, the demise of Chevron – the doctrine by which agencies enjoy deference in interpreting ambiguous statutes – has long been coming. While Chevron’s demise, and the resulting resurgence of Skidmore, is likely to lead...more
ARTIFICIAL INTELLIGENCE IN LIFE SCIENCES - Life sciences companies are forming AI-driven strategic collaborations with tech giants, creating synergy that promises to revolutionize the industry. Companies like NVIDIA,...more
Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partners Andy...more
The institution rate for post-grant petitions in FY 2024 through the end of April 2024 (the period from Oct. 1, 2023 through April 30, 2024) stands at 66% (427 instituted, 230 denied). This rate remains flat compared to the...more
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: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more
The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more
Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more
On April 19, 2024, the United States Patent and Trademark Office (USPTO or Office) issued proposed modifications to the rules of practice for inter partes review (IPR) and postgrant review (PGR) proceedings before the Patent...more
Patent owners need to be wary of the pitfalls when attempting to procure follow on patents to an existing technology. It could turn out your own patents could be used against others in the portfolio to render them invalid or...more
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more
A vexing issue in post-grant patent practice is understanding the limits of how far a patent challenger can deviate from the four corners of its petition during the proceeding. The petition is the challenger’s case-in-chief....more
RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A - Before Chen, Stoll, and Cunningham. Appeal from the Patent Trial and Appeal Board....more