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5 Key Takeaways | Rolling with the Legal Punches: Resetting Patent Strategy to Address Changes in the Law
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A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor patent....more
The acting director of the US Patent & Trademark Office (PTO) granted a patent owner’s request for discretionary denial and denied institution of an inter partes review (IPR) proceeding, finding that the petitioner engaged in...more
As has been noted recently (Agilent Technologies, Inc. v. Synthego Corp.), fact-based decisions from the U.S. Patent and Trademark Office (typically from the Patent Trial and Appeal Board) are reviewed under the substantial...more
On June 18, 2025, U.S. Patent and Trademark Office Acting Director Stewart issued a discretionary denial decision in Dabico Airport Solutions Inc. v. AXA Power ApS, granting the patent owner’s request for discretionary denial...more
Sterne Kessler’s U.S. IP Update is a newsletter delivering the latest developments in U.S. intellectual property law, tailored for companies and legal counsel in Korea. Stay informed on key court decisions, policy changes,...more
Under a new U.S. Patent and Trademark Office ("USPTO") policy issued in March 2025, pre-institution inter partes review ("IPR") proceedings are now bifurcated, consisting of a first phase in which the director considers...more
iRhythm Technologies, Inc., v. Welch Allyn, Inc., IPR2025-00363, IPR2025-00374, IPR2025-00376, IPR2025-00377, IPR2025-00378 (P.T.A.B. June 6, 2025) - On June 6, 2025, United States Patent and Trademark Office (“USPTO”)...more
Just three months ago, Acting Director of the U.S. Patent and Trademark Office (USPTO) Coke Morgan Stewart rescinded existing guidelines governing the Patent Trial and Appeal Board's (PTAB) discretion to deny petitions for...more
In a startling development, Acting Director of the USPTO Coke Morgan Stewart has denied institution of an inter partes review (IPR) on the basis of “settled expectations,” on the sole ground that the subject patent had been...more
Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv...more
When Acting USPTO Director Coke Morgan Stewart denied institution in Dabico v. AXA Power IPR2025-00408 Paper 21, much of the commentary focused on the result....more
On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more
The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more
USPTO Acting Director Coke Morgan Stewart recently issued a decision discretionarily denying five petitions for inter partes review (IPR) filed by iRhythm against patents owned by Welch Allyn based on a factor that had not...more
Patent attorneys are well-versed in the function of the Information Disclosure Statement (IDS) during prosecution. We understand that listing prior art in an IDS satisfies the duty of candor, helps insulate patents from...more
On June 6, 2025, the acting Director of the U.S. Patent and Trademark Office (USPTO), Coke Morgan Stewart, issued a decision in iRhythm Technologies v. Welch Allyn, Inc.1 that initiates a new basis for discretionary denial...more
The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more
On June 6, 2025, Acting USPTO Director Stewart issued a decision in iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10 (and four related IPRs), which granted Patent Owner’s request for discretionary denial. This is...more
On May 1, 2025, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. The...more
The PTAB has published its monthly statistics wrap up for April 2025. As expected, those statistics show a significant decline in the institution rate compared to the first six months of the fiscal year. In those first six...more
Inter partes review (IPR) practices have seen significant changes since US Patent and Trademark Office Acting Director Coke Stewart assumed her current role in January 2025. Perhaps the most significant change has been Acting...more
This Federal Circuit Opinion analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures....more
On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process. Under the new process, the parties separately brief discretionary denial issues...more
While it may seem like the only constant at the United States Patent and Trademark Office (USPTO) is change, that sentiment rings especially true in 2025. With a new presidential administration in the White House and numerous...more
The USPTO’s recent guidance on discretionary denials has shifted patent practitioners back to the Fintiv and Sotera Wireless framework....more