News & Analysis as of

Litigation Strategies Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office

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

Understanding the PTAB’s Recent Informative Decision: Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR)...more

Morgan Lewis

A New Era for the PTAB: Discretion Returns, Layoffs Loom, and Early Challenges Encouraged

Morgan Lewis on

The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a...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

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

Hudnell Law Group

PTAB Recalibrates Review: New Discretionary Denial Framework and Pre-Institution Reform

Hudnell Law Group on

In less than a month, the United States Patent and Trademark Office (“USPTO”) has dramatically reformed its policies and procedures for exercising its discretion to deny institution of AIA post-grant proceedings. First, on...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

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

American Conference Institute (ACI)

[Virtual Conference] PTAB Practice Briefing - December 2nd, 10:00 am - 6:00 pm EST

Year-End Analysis and Future Forecasts on the Most Significant Developments Impacting Post-Grant Proceedings. Attend ACI’s inaugural PTAB Practice Briefing virtually on December 2nd for in-depth discussions and year-end...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #8 for Surviving an Instituted IPR: Additional Discovery is Possible, but Should be Carefully Planned

Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more

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

PTAB Strategies and Insights - September 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Jones Day

PTAB Holds Mock Oral Arguments for LEAP Attorneys

Jones Day on

Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more

White & Case LLP

CBM Review – Last Call

White & Case LLP on

Covered Business Method (“CBM”) review ends in mid-September, and you have one last chance to take advantage. In 2011, the AIA introduced three new administrative review proceedings of patentability with the goal of...more

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

Patent Prosecution Tool Kit: 1.132 Declarations for Traversing Rejections

Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more

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

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

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

PTAB Strategies and Insights - February 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

WilmerHale

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

WilmerHale on

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

Foley & Lardner LLP

Federal Circuit Dismisses WARF Stem Cell Case – A Missed Opportunity

Foley & Lardner LLP on

Recently in Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 2013-1377 (Fed. Cir. 2014), the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) dismissed Appellant Consumer Watchdog’s appeal on the...more

Robins Kaplan LLP

Three Reasons PTAB Litigation Costs More Than We Thought

Robins Kaplan LLP on

The America Invents Act (AIA) has been in effect from more than a year and half. Now, many have begun to ask if the patent office trials the AIA created are living up to their promise of lowering patent litigation costs and...more

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