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Inter Partes Review (IPR) Proceeding Regulatory Requirements Intellectual Property Protection

Ballard Spahr LLP

USPTO Procedure Adds New Hurdle to PTAB Trial Institution

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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

BCLP

Patent Office Withdraws Previous Discretionary Denial Guidance for Post-Grant Proceedings

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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

Akin Gump Strauss Hauer & Feld LLP

USPTO Withdraws Fintiv Memo on Discretionary Denials in Post-Grant Proceedings

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

Jones Day

PTAB Forgives MTA Procedural Error

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The Federal Circuit affirmed in part, reversed-in-part and remanded-in-part the Board’s decision in the inter partes review of U.S. Patent No. 8,265,096 (the “’096 patent”), and affirmed the Board’s decision as to the cross...more

Jones Day

Petition Survives Word Count Complaint And Request for Withdrawal

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The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply with the word limit...more

Jones Day

Down to the Wire: POP Finds Petition Payment Timely

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On January 14, 2022, the PTAB issued a precedential opinion granting a request for rehearing of a denial of an IPR petition that had previously found a petition to be time-barred because the wire transfer had not been timely...more

Troutman Pepper Locke

The Obligation to Submit Agreements in IPRs Is Broad

Troutman Pepper Locke on

DTN, LLC v. Farms Technology, LLC, IPR2018-01412, -01525 (June 14, 2019) - On June 11, 2020, the PTAB designated as precedential its 2019 decision in DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of...more

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