Navigating PTAB’s New Approach to IPR and PGR Discretionary Denial - Patents: Post-Grant Podcast
4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation
Behaving Badly: OpenSky v. VLSI and Sanctions at the PTAB — Patents: Post-Grant Podcast
Scott McKeown Discusses PTAB Trends and Growth of Wolf Greenfield’s Washington, DC Office
USPTO Director Review — Patents: Post-Grant Podcast
The Briefing: Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Podcast: The Briefing - Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Disputing Patent-Eligible Subject Matter in PGRs and IPRs - Patents: Post-Grant Podcast
Reexamination in IPR and PGR Practice – Patents: Post-Grant Podcast
Reissue in IPR and PGR Practice – Patents: Post-Grant Podcast
3 Key Takeaways | Third party Prior Art Submissions at USPTO
Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast
JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges
IPR Institution and Early Intervention - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
Nota Bene Episode 99: Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters
Fallout from the Fintiv Precedential Decision
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
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
Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. ...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
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more
On March 24, 2025, the United States Patent and Tradmark Office (“USPTO”) issued a new Memorandum providing guidance on discretionary denials (or “Fintiv denials”) for inter partes review (“IPR”) challenges based on...more
In a precedential opinion issued on March 4, 2025, in Restem, LLC v. Jadi Cell, LLC, No, 23-2054, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB’s claim construction and ruling that product-by-process...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 this edition of The Precedent, we outline the Federal Circuit's decision in HD Silicon Solutions LLC v. Microchip Technology Inc. In HD Silicon Solutions LLC, the Federal Circuit addressed an appeal from the USPTO Patent...more
On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more
In Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376 (Fed. Cir. 2025), the Federal Circuit held that patentees in district court are not collaterally estopped from asserting claims that were not immaterially different...more
Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more
Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more
Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025) Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based...more
Takeaways - - Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. - “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more
Rituximab Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...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
On February 24, 2025 the United States Patent and Trademark Office (USPTO) announced that David Gooder would step down from his role as Commissioner for Trademarks at the end of the month....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, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...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
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
Etanercept Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more