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Patent Litigation Administrative Procedure

Sheppard Mullin Richter & Hampton LLP

Breaking Down the Bifurcated PTAB Review Process: What the USPTO’s Recent FAQ Drop Reveals

On March 26, 2025, the U.S. Patent and Trademark Office released a memorandum introducing a new interim process for handling institution decisions in inter partes reviews (IPRs) and post-grant reviews (PGRs). The Office just...more

Fish & Richardson

PTAB Issues FAQs on Interim Process for Workload Management

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Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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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

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

McDermott Will & Emery

An Odyssey of Timeliness: Appointments Clause Arguments Must Be Preserved

McDermott Will & Emery on

Citing forfeiture, the US Court of Appeals for the Federal Circuit upheld the dismissal of a complaint against the US Patent & Trademark Office (PTO). The complaint sought director review of a 2018 Patent Trial & Appeal Board...more

Morrison & Foerster LLP

Federal Circuit Significantly Broadens Qualifying Expenses for Economic Domestic Industry at the ITC

On March 5, the Federal Circuit held that sales, marketing, warehousing, quality control, or distribution expenditures may count as “employment of labor or capital” for purposes of satisfying the economic domestic industry...more

Fenwick & West LLP

USPTO Issues New Rules Governing MTA Practice and Procedures at PTAB

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The United States Patent and Trademark Office (USPTO) has announced new rules governing amendment practice in trial proceedings under the America Invents Act (AIA), making certain provisions of the motion to amend pilot...more

Fish & Richardson

How the Timing of Director Review May Affect Co-Pending Litigation

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Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

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One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

WilmerHale

PTAB/USPTO Update - August 2023

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USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

Haug Partners LLP

Changes to the Rules of Ethics for Patent Law Practitioners

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On May 26, 2021, the United States Patent and Trademark Office (“USPTO”) finalized the amendments to the Rules of Practice in Patent Cases as well as the rules regarding Representation of Others before the United States...more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more

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

PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more

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

Patent Prosecution Tool Kit: Invoking an AIA Exception to Prior Art, 1.130 Declarations

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an...more

McDonnell Boehnen Hulbert & Berghoff LLP

Smith & Nephew File Certiorari Petition in Arthrex Case

While the Federal Circuit's decision last fall in Arthrex, Inc. v. Smith & Nephew, Inc. raised issues about the appointment of Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB), it should...more

Foley & Lardner LLP

PTAB Precedential 35 U.S.C. 315(b) Decisions Show Service in Dismissed Infringement Cases Can Still Bar IPR Institution

Foley & Lardner LLP on

The PTAB recently designated two decisions interpreting 35 U.S.C. § 315(b) as precedential. Each decision applies the Federal Circuit’s literalist interpretation of § 315(b) from Click-to-Call (CTC) to, in one...more

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

The Goods on IP® - September 2019

The September 2019 issue of Sterne Kessler's The Goods on IP® discusses the Amazon Utility Patent Neutral Evaluation Procedure, reviews recent design patent PTO litigation statistics, and analyzes why the utility model...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

Smart & Biggar

Rx IP Update - March 2019

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Federal Court finds invalidity allegations relating to patent for metformin formulations not justified - On March 8, 2019, Justice Fothergill granted Valeant Canada’s application for an order prohibiting the Minister of...more

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

PTAB Strategies and Insights - March 2019

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

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

PTAB Strategies and Insights - December 2018: Proposed New Motion to Amend Procedure Gives Patent Owners a Fighting Chance at...

With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials....more

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

PTAB Strategies and Insights - November 2018: Proposed New Motion to Amend Procedure

Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more

Knobbe Martens

Recent Update on Patent Trial Practice Guide

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The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

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

PTAB Strategies and Insights - July 2018: 5 Informative Decisions From The PTAB

On July 10, 2018, the PTAB informed the patent bar that they designated five decisions as informative for: issue preclusion; use of and versus or when referencing lists; DJ bar for joinder cases; depositions in foreign...more

Knobbe Martens

Four New Rules at the ITC That Patent Litigators Need to Know

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International Trade Commission - The ITC has issued a series of new rules applying to all Section 337 investigations instituted after June 7, 2018. Although the overall impact of these new rules is not yet known,...more

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