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Proskauer - The Patent Playbook

Further Shifts in Patent Office Guidance for Discretionary Denials Signal Uphill Battles for Patent Challengers

On the heels of the rescission of the Fintiv guidance memorandum, the U.S. Patent and Trademark Office has again reshaped the PTAB’s approach to discretionary denials. On March 26, 2025, the Acting Director issued a new...more

Morrison & Foerster LLP

Pivot At The PTAB: The Acting Director Bifurcates Review

With two memoranda this week, the United States Patent and Trademark Office (“USPTO”) has made significant changes to trials at the Patent Trial and Appeal Board (“PTAB”). Those trials—introduced in 2012 by the Leahy-Smith...more

Morgan Lewis

USPTO in 2025: Leadership, Operational, Legislative, and Policy Changes to Watch

Morgan Lewis on

As 2025 unfolds, changes across the patent landscape are unfolding. From agency leadership transitions to proposed legislation and evolving AI-related policies, these shifts could impact patent prosecution, post-grant...more

Kilpatrick

Patent Office Rolls Back Director Vidal's Guidance on PTAB Discretionary Denials

Kilpatrick on

On Friday, February 28, the Patent Office officially rescinded Dr. Vidal’s June 21, 2022, memorandum addressing IPR discretionary denial (“2022 Memorandum”). The 2022 Memorandum provided guidance to the PTAB in applying...more

Haug Partners LLP

Federal Circuit Limits Use of PTAB Unpatentability Rulings to Estop Patentees From Asserting Claims

Haug Partners LLP on

On February 10, 2025, the Federal Circuit issued a precedential decision in Kroy IP Holdings, LLC v. Groupon, Inc., where the Court held that a “a prior final written decision of the [PTAB] of unpatentability on separate...more

Dinsmore & Shohl LLP

Apple Prevails and Federal Circuit Puts Expert Testimony in the Spotlight

Dinsmore & Shohl LLP on

The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...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

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

Jones Day on

The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more

Ropes & Gray LLP

Expected Changes to IP Policy under the Second Trump Administration

Ropes & Gray LLP on

Intellectual property (“IP”) policy does not weigh heavily on most voters’ minds, and so is not often addressed in presidential campaigns. This past campaign was no different – President-elect Donald Trump did not expressly...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Trial Statistics Trends at the PTAB: 2024 Edition

At the end of each fiscal year running from October 1 through September 30, the Patent Trial and Appeal Board (“PTAB”) provides a summary of its trial statistics. This information provides practitioners with useful insight...more

McGuireWoods LLP

USPTO Director Provides Guidance on PTAB’s § 315 Time Bar Analyses

McGuireWoods LLP on

On Nov. 21, 2024, U.S. Patent and Trademark Office Director Kathi Vidal issued a Patent Trial and Appeal Board (PTAB) Director Review decision addressing 35 U.S.C. § 315(a)(1) and § 315(b), the statutes that preclude...more

Fish & Richardson

Survey Shows Trends in PTAB’s Willingness to Institute Multiple Petitions

Fish & Richardson on

The Consolidated Trial Practice Guide states that, “[t]o date, a substantial majority of patents have been challenged with a single petition.” Consolidated Trial Practice Guide (November 2019) at 59. However, “the Board...more

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

Irwin IP LLP on

Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

Baker Donelson on

As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more

Morgan Lewis

Federal Circuit Clarifies Scope and Timing of Collateral Estoppel for Claims Under IPR

Morgan Lewis on

In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...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

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their...more

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

2023 PTAB Year in Review: Analysis & Trends

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

Haug Partners LLP

Federal Circuit Underscores the Importance of Complying With PTAB Procedural Rules in Parus Holdings v. Google

Haug Partners LLP on

The Federal Circuit’s recent precedential decision in Parus Holdings v. Google underscores the importance of complying with the PTAB’s procedural rules in an IPR and the potentially serious consequences of not doing so. The...more

McDermott Will & Emery

Console Yourself: Patent Owner Bears IPR Estoppel Burden

McDermott Will & Emery on

Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that...more

Goodwin

USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Goodwin on

​​​​​​​Director Katherine Vidal of the U.S. Patent and Trademark Office (“USPTO”) issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before the...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Holds Priority Documents Lack Direction to Support Claims

On March 6, in Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) invalidating claims of the...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Federal Circuit Rejects Additional Challenges to USPTO Authority After Arthrex

CyWee Group Ltd. (“CyWee”) has been bouncing between the Federal Circuit and Patent Trial and Appeal Board (“Board”) with its administrative challenges after two inter partes review (“IPR”) proceedings invalidated the claims...more

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