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ArentFox Schiff

USPTO Reshapes Discretionary Denials for Post-Grant Proceedings

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued two memoranda reshaping the Patent Trial and Appeal Board’s (PTAB) approach to discretionary denials for parallel proceedings....more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

Mayer Brown on

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

McDermott Will & Emery

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...more

Holland & Knight LLP

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

Holland & Knight LLP on

Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Issues Guidance on Discretionary Denials

In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more

Axinn, Veltrop & Harkrider LLP

Fintiv and the Resurgence of PTAB Discretionary Denials Involving the ITC

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

Jones Day

PTAB Issues Updated Fintiv Guidance

Jones Day on

After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday.  ...more

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

PTAB Issues Memo on Fintiv Analysis Changes

On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the Patent Trial and Appeal Board (PTAB) explaining why the USPTO’s June 2022 Fintiv memo was rescinded and how...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Actavis Labs. FL, Inc. v. United States

Actavis Labs. FL, Inc. v. United States, Appeal No. 2023-1320 (Fed. Cir. Mar. 21, 2025) Our Case of the Week, in the words of its author, Circuit Judge Stark, “is not actually a patent case. It is, instead, a tax case.” In...more

ArentFox Schiff

USPTO Rescinds Vidal’s 2022 Guidance on PTAB Discretionary Denials

ArentFox Schiff on

On February 28, the US Patent and Trademark Office (USPTO) rescinded former Director Kathi Vidal’s 2022 memorandum on discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings running parallel to...more

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

USPTO Withdraws June 2022 Guidance on Fintiv Denials

On Friday, February 28, 2025, the United States Patent and Trademark Office (USPTO) announced the withdrawal of the June 2022 memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with...more

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

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

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

Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

Fish & Richardson on

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

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

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

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

2024 Design Patents Year in Review: Analysis & Trends

As we predicted in our 2023 report, 2024 was a banner year for design rights in the U.S. and elsewhere. In last year’s report, we noted that the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed to consider en banc...more

Pillsbury Winthrop Shaw Pittman LLP

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

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

Reviewing 2024's Crucial Patent Law Developments

As 2024 draws to a close, several crucial developments — some aimed at modernizing long-standing legal practices, others addressing emerging challenges — have reached patent law. Originally published in Law360 - December...more

Flaster Greenberg PC

Chevron’s Demise and Its Effect on Intellectual Property & Its Governing Agencies

Flaster Greenberg PC on

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

Venable LLP

Loper Decision Impact on Patent Law

Venable LLP on

Venable has offered general thoughts on the potential fallout from the Supreme Court's reversal of the long-standing Chevron deference, as well as practice area-specific analysis. Here, the Intellectual Property Litigation...more

A&O Shearman

Shifting Strategies in U.S. Intellectual Property Disputes: Lessons from 2023

A&O Shearman on

For Taiwanese corporates developing critical technologies in the face of shifting global supply chains, the need to protect intellectual property assets has never been more pressing. The biggest IP-related drag on company...more

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

2023 PTAB Year in Review: Analysis & Trends: Standard Essential Patents at the PTAB: Are SEPs Faring any Differently than...

Standard-essential patents (SEPs) are on the rise. A key factor undergirding that rise is the desire for device connectivity in all things, and the fact that reliable and robust connectivity is impossible without using key...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

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

2023 Design Patents Year in Review: Analysis & Trends

Not surprisingly, 2023 was another notable year for design rights around the globe. However, nowhere more than the U.S. did we see court decisions that will, in the case of one, and could in the case of another, have...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

Pillsbury Winthrop Shaw Pittman LLP

U.S. Patent Trial and Appeal Board (PTAB) Considers Sweeping Reform to Address Discretionary Denials and Petitions Filed by...

The USPTO is considering changes to provide a framework to guide practitioners and the PTAB in assessing the circumstances that warrant the PTAB’s exercise of its discretion to deny a petition. The USPTO is considering...more

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